716.02(e) Comparison With Closest Prior Art - Bayhdolecentral

716.02(e) MANUAL OF PATENT EXAMINING PROCEDURE
relative proportions were rejected as primafacie obvions.
Applicant presented evidence alleging unexpected
results testing tbree species of diphenyl ether
herbicides over limited relative proportion ranges.
The court held that the limited number of species
exemplified did not provide an adequate basis for
concluding that similar results would be obtained for
the other diphenyl ether herbicides witbin the scope of
the generic claims. Claims 6-8 recited a
FENAC:diphenyl ether ratio of 1:1 to 4:1 for the tbree
specific ethers tested. For two of the claimed ethers,
unexpected results were demonstrated over a ratio of
16:1 to 2:1, and the effectiveness increased as the
ratio approached the untested region of the claimed
nmge. The court held these tests were commensurate
in scope with the claims and supported the nonobviousness
thereof. However, for a third ether, data was
only provided over the range of1:1 to 2:1 where the
effectiveness decreased to the "expected level" as it
approached the untested region. This evidence was
not sufficient to overcome the obviousness rejection.);
In reLindner, 457 F.2d 506, 509, 173 USPQ 356, 359
(CePA 1972) (Evidence of nonobviousness consisted
of comparing a single composition within the broad
scope of the claims with the prior art. The court did
not find the evidence sufficient to rebut the prima
facie case of obviousness because there was "no adequate
basis for reasonably concluding that the great
number and variety of compositions included in the
claims would behave in the same manner as the tested
composition.").
DEMONSTRATING CRITICALITY OF A
CLAIMED RANGE
To establish unexpected results over a claimed
range, applicants should compare a sufficient number
of tests both inside and outside the claimed range to
show the criticality of the claimed range. In re Hill,
284 F.2d 955, 128 USPQ 197 (CCPA 1960).
716.02(e) Comparison With Closest
Prior Art
An affidavit or declaration under 37 CPR 1.132
must compare the claimed subject matter with the
closest prior art to be effective to rebut a prima facie
case of obviousness. In re Burckel, 592 F.2d 1175, 201
USPQ 67 (CCPA 1979). "A comparison of the
claimed invention with the disclosure of each cited
August 2001 700-222
reference to determine the number of claim limitations
in common with each reference, bearing in mind
the relative importance of particular limitations, will
usually yield the closest single prior art reference." In
re Merchant, 575 F.2d 865, 868, 197 USPQ 785, 787
(CCPA 1978) (emphasis in original). Where the comparison
is not identical with the reference disclosure,
deviations therefrom should be explained, In re Finley,
174 F.2d 130, 81 USPQ 383 (eCPA 1949), and if
not explained should be noted and evaluated, and if
significant, explanation should be required. In re Armstrong,
280 F.2d 132, 126 USPQ 281 (CePA 1960)
(deviations from example were inconsequential).
THE CLAIMED INVENTION MAY BE
COMPARED WITH PRIOR ART THAT IS
CLOSER THAN THAT APPLIED BY THE
EXAMINER
Applicants may compare the claimed invention
with prior art that is more closely related to the invention
than the prior art relied upon by the examiner. In
re Holladay, 584 F.2d 384, 199 USPQ 516 (CCPA
1978); Ex parte Humber, 217 USPQ 265 (Bd. App.
1961) (Claims to a 13-chloro substituted compound
were rejected as obvious over nonchlorinated analogs
of the claimed compound. Evidence showing unexpected
results for the claimed compound as compared
with the 9-, 12-, and 14- chloro derivatives of the
compound rebutted the prima facie case of obviousness
because the compounds compared against were
closer to the claimed invention than the prior art relied
upon.),
COMPARISONS WHEN THERE ARE TWO
EQUALLY CLOSE PRIOR ART REFERENCES
Showing unexpected results over one of two
equally close prior art references will not rebut prima
facie obviousness unless the teachings of the prior art
references are sufficiently similar to each other that
the testing of one showing unexpected results would
provide the same information as to the other. In re
Johnson, 747 F.2d 1456, 1461,223 USPQ 1260, 1264
(Fed. eir. 1984) (Claimed compounds differed from
the prior art either by the presence of a trifluoromethyl
group instead of achloride radical, or by the presence
of ail unsaturated ester group instead of a
saturated ester group. Although applicant compared
the claimed invention with the prior art compound

containing a chloride radical, the court found this evidence
insufficient to rebut the prima facie case of
obviousness because the evidence did not show relative
effectiveness over all compounds of the closest
prior art. An applicant does not have to test all the
compounds taught by each reference, "[hjowever,
where an applicant tests less than all cited compounds,
the test must be sufficient to permita conclusion
respecting the relative effectiveness ofapplicant's
claimed compounds and the compounds ofthe closest
prior art." Id. (quoting In re Payne, 606 F.2d 303,
316,203 USPQ 245, 256 (CCPA 1979)) (emphasis in
original).).
THE CLAIMED INVENTION MAY BE
COMPARED WITH THE CLOSEST SUBJECT
MATTER THAT EXISTS IN THE PRIOR ART
Although evidence of unexpected results must
compare the claimed invention with the closest prior
art, applicant is not required to compare the claimed
invention with subject matter that does not exist in the
prior art. In re Geiger, 815 F.2d 686, 689, 2 USPQ2d
1276, 1279 (Fed. Cir. 1987) (Newman, J., concurring)
(Evidence rebutted prima facie case by comparing
claimed invention with the most relevant prior art.
Note that the majority held the Office failed to estab­
Iish a prima facie case of obviousness.); In -re Chapman,
357 F.2d 418, 148 USPQ 711 (CCPA 1966)
(Requiring applicant to compare claimed invention
with polymer suggested by the combination of references
relied upon in the rejection of the claimed
invention under 35 U.S.C. 103 "would be requiring
comparison of the results of the invention with the
results of the invention." 357 F.2d at 422, 148 USPQ
at 714.).
716.02(0 Advantages Disclosed or inherent
The totality of the record must be considered when
determining whether a claimed invention would have
been obvious to one of ordinary skill in the art at the
time the invention was made. Therefore, evidence
and arguments directed to advantages not disclosed in
the specification cannot be disregarded. In re Chu, 66
F.3d 292, 298-99, 36 USPQ2d 1089, 1094-95 (Fed.
Cir. 1995) (Although the purported advantage of
placement of a selective catalytic reduction catalyst in
the bag retainer of an apparatus for controllingemis-
EXAMINAnON OFAPPLICAnONS 716.03
sions was not disclosed in the specification, evidence
and arguments rebutting the conclusion that such
placement was a matter of "design choice" should
have been considered as part of the totality of the
record. "We have found no cases supporting the position
that a patent applicant's evidence or arguments
traversing a § 103 rejection must be contained within
the specification. There is no logical support for such
a proposition as well, given that obviousness is determined
by the totality of therecord including, in some
instances most significantly, the evidence and arguments
proffered during the give-and-take of ex parte
patent prosecution." 66 F.3d at 299, 36 USPQ2d at
1095.). See also In re Zenitz; 333 F.2d 924, 928, 142
USPQ158, 161 (CCPA 1964) (evidence that claimed
compound minimized side effects of hypotensive
activity must be considered because this undisclosed
property would inherently flow from disclosed use as
tranquilizer); Ex parte Sasajima, 212 USPQ 103, 104
- 05 (Bd. App. 1981) (evidence relating to initially
undisclosed relative toxicity of claimed pharmaceutical
compoundmust be considered).
The specification need not disclose proportions or
values as critical for applicants to present evidence
showing the proportions or values to be critical. In re
Saunders, 444 F.2d 599, 607, 170 USPQ 213, 220
(CCPA 1971).
716.02(g) Declaration or Affidavit Form
"The reason for requiring evidence in declaration or
affidavit form is to obtain the assurances that any
statements or representations made are correct, as pro- .
vided by 35 U.S.C. 25and 18 U.S.C. 1001." Permitting
a publication to substitute for expert testimony
would circumvent the guarantees built into the statute.
Ex parte Gray, 10 USPQ2d 1922, 1928 (Bd. Pat. App.
& Inter. 1989). Publications may, however, be evidence
of the facts in issue and should be considered to
the extent that they are probative.
716.03
Commercial Success
NEXUS BETWEEN CLAIMED INVENTION
AND EVIDENCE OF COMMERCIAL SUCCESS
REQUIRED
An applicant who is asserting commercial success
to support its contention of nonobviousness bears the
burden ofproof of establishing a nexus between the
700-223 August.zmt

716.03(a) MANUAL Of PATENT EXAMINING PROCEDURE
claimed invention and evidence of commercial success.
The Federal Circuit has acknowledged thatapplicant
bears the burden of establishing nexus, stating:
In the ex parte process of examining a patent application,
however, the PrO lacks the means or resources to gather
evidence which supports or refutes the applicant's' assertion-that
the sale constitute commercial success. Cf: Ex
parte Remark, IS USPQ2d 1498, 1503 (Bd. Pat. App. &
Int. 1990)(evidentiary routine of shifting burdens in civil
proceedings inappropriate in ex parte prosecution proceedings
because examiner has no available means for
adducing evidence). Consequently, the Pl'O'jnust rely
upon the applicant to provide hard evidence of commercia!
success,
In re Huang, 100 F.3d 135, 139-40, 40 USPQ2d
1685,1689 (Fed. Cir. 1996). See alsoIn re GPAC, 57
F.3d 1573, 1580, 35 USPQ2d 1ll6, 1121 (Fed. Cir.
1995); In re Paulsen, 30 F.3d 1475, 1482,31 USPQ2d
1671,1676 (Fed.Cir. 1994) (Evidence of commercial
success of articles not covered by the claims subject
to the 35 U.S.C. 103 rejection was not probative of
nonobviousness).
The term "nexus" designates a factually and legally'
sufficient connection between the evidence of commercial
success and the claimed invention so that the
evidence is of probative value in the determination of
nonobviousness. Demaco Corp. v. F. Von Langsdorf!
Licensing Ltd., 851 F.2d 1387, 7 USPQ2dl222 (Fed.
Cir. 1988).
COMMERCIAL SUCCESS ABROAD IS RELE­
VANT,
Commercial success abroad, as well as in the
United States, is relevant in resolving the issne of
nonobviousness. Lindemann Maschinen[abrik GMBH
v. American Hoist & Derrick Co., 730 F.2d 1452, 221
USPQ 481 (Fed. Cir. 1984).
716.03(a) Commercial Success Commensurate
in Scope With Claimed
Invention
EVIDENCE OF COMMERCIAL SUCCESS
MUST BE COMMENSURATE IN SCOPE WITH
THE CLAIMS
Objective evidence of nonobviousness including
commercial success must be commensurate in scope
August 2001 700-224
with the claims. In re TIffin, 448 F.2d 791, 171 USPQ
294 (CCPA 1971) (evidence showing commercial
success of thermoplastic foam "cups" used in vending
machines was not commensurate in scope with claims
directed to thermoplastic foam "containers" broadly).
In orderto be commensurate is scope with the claims,
the commercial success must be due to claimed features,
and not due to unclaimed features, Joy Technologies
Inc. v. Manbeck, 751 E Supp. 225, 229, 17
USPQ2d 1257, 1260 (D.D.C. 1990), aff'd, 959 F.2d
226, 228, 22 USPQ2d 1153, 1156 (Fed. Cir. 1992)
(Features responsible for commercial success were
recited only in allowed dependent claims, and therefore
the evidence of commercial success was not
commensurate in scope with the broad claims at
issue.).
An affidavit or declaration attribnting commercial
success to a product or process "constructed according
to the disclosure and claims of [the] patent application"
or other equivalent language does not
establish a nexus between the claimed invention and
the commercial success because there is no evidence
that the product or process which has been sold corresponds
to the claimed invention, or that whatever
commercialsuccess may have occurred is attributable
to the product or process defined by the claims. Ex
parte Standish, 10 USPQ2d 1454, 1458 (Bd. Pat.
App. & Inter. 1988).
REQUIREMENTS WHEN CLAIMED
INVENTION IS NOT COEXTENSIVE WITH
COMMERCIAL PRODUCT OR PROCESS
If a particular range is claimed, applicant does not
need to show commercial success at every point in the
range. "Where, as here, the claims are directed to a
combination of ranges and procedures not shown by
the prior art, and where substantial commercial success
is achieved at an apparently typical point within
those ranges, and the affidavits definitely indicate that
operation throughout the claimed ranges approximates
that at the particular points involved in the
commercial operation, we think the evidence as to
commercial success is persuasive." In re Hollingsworth,
253 F.2d 238, 240, 117 USPQ 182, 184
(CCPA 1958). See also Demaco Corp. v. F. Von
Langsdorf!Licensing Ltd., 851 F.2d 1387, 7 USPQ2d
1222 (Fed. Cir. 1988) (where the commercially successful
product or process is not coextensive with the

716,04 MANUAL OF PATENT EXAMINING PROCEDURE
design cases. Evidence of commercial success must
be clearly attributable to the design to be of probative
value, and uot to brand name recognition, improved
performance, or some other factor. Litton Systems,
Inc. v. Whirlpool Corp., 728 F.2d 1423, 221 USPQ 97
(Fed. Cir, 1984) (showing of commercial success was
not accompanied by evidence attributing commercial
success of Litton microwave oveu to the design
thereof).
SALES FIGURES MUST BE ADEQUATELY DE­
FINED
Gross sales figures do not show commercial success
absent evideuce as to market share, Cable Electric
Products, Inc. v. Genmark, Inc., 770 F.2d 1015,
226 USPQ 881 (Fed. Cir. 1985), or as to the time
period duriug which the product was sold, or as to
what sales would Ilormally be expected in the market,
Ex parte Standish, 10 USI'Q2d 1454 (Bd. Pat. App. &
Inter. 1988).
716.04 Long-Felt Need and Failure of
Others
THE CLAIMED INVENTION MUST SATISFY A
LONG-FELT NEED WmCH WAS RECOG­
NIZED, PERSISTENT, AND NOT SOLVED BY
OTHERS
Establishing long-felt need requires objective evidence
that an art recoguized problem existed in the art
for a long period of time without solution. The relevance
of long-felt need and the failure of others to the
issue of obviousness depends on several factors. First,
the need must have been a persistent one that was recognized
by those of ordinary skill in the art. In re Gershon,
372 F.2d 535, 539, 152 USPQ 602, 605 (CCI'A
1967) ("Since the alleged problem in this case was
first recognized by appellants, and others apparently
have not yet become aware of its existence, it goes
without saying that there could not possibly be any
evidence of either a long felt need in the ... art for a
solution to a problem of dubious existence or failure
of others skilled in the art who unsuccessfully
attempted to solve a problem of which they were not
aware."); Orthopedic Equipment Co., Inc. v. All
Orthopedic Appliances, Inc., 707 F.2d 1376, 217
USPQ 1281 (Fed. Cir. 1983) (Although the claimed
invention achieved the desirable result of reducing
August2001 700-226
inventories, there was no evidence of any prior'unsuccessful
attempts to do so.).
Second, the long-felt need must not have been satisfied
by another before the invention by applicant.
Newell Companies v. Kenney Mfg. Co., 864 F.2d 757,
768, 9 USPQ2d 1417, 1426 (Fed. Cir. 1988)
(Although at one time there was a long-felt need for a
"do-it-yourself' window shade material which was
adjustable without the use of tools, a prior art product
fulfilled the need by using a scored plastic material
which could be tom. "[O]nce another supplied the key
element, there was no long-felt need or, indeed, a
problem to be solved".)
Third, the invention must in fact satisfy the longfelt
need. In re Cavanagh, 436 F.2d 491, 168 USPQ
466 (CCPA 1971).
LONG·FELT NEED IS MEASURED FROM THE
DATE A PROBLEM IS IDENTIFIED AND
EFFORTS ARE MADE TO SOLVE IT
Long-felt need is analyzed as of the date the problem
is identified and articulated, and there is evidence
of efforts to solve that problem, not as of the date of
the most pertinent prior art references. Texas Instruments
Inc. v. Int'l Trade Comm 'n, 988 F.2d 1165,
1179, 26 USPQ2d 1018, 1029 (Fed. Cir. 1993).
OTHER FACTORS CONTRffiUTING TO THE
PRESENCE OF A LONG-FELT NEED MUST BE
CONSIDERED
The failure to solve a long-felt need may be due to
factors such as lack of interest or lack of appreciation
of an invention's potential or marketability rather than
want of technical know-how. Scully Signal Co. v.
Electronics Corp. of America, 570 F.2d 355, 196
USPQ 657 (1st. Cir. 1977).
See also Environmental Designs, Ltd. v. Union Oil
Co. of Cal., 713 F.2d 693, 698, 218 USPQ 865, 869
(Fed. Cir. 1983) (presence of legislative regulations
for controlling sulfur dioxide emissions did not militate
against existence of long-felt need to reduce the
sulfur content in the air); In re Tiffin, 443 F.2d 344,
170 USPQ 88 (CCPA 1971) (fact that affidavit supporting
contention offulfillment of a long-felt need
was sworn by a licensee adds to the weight to be
accorded the affidavit, as long as there is a bona fide
licensing agreement entered into at arm's length).

716.05
"Expressions of disbelief by experts constitnte
strong evidence of nonobviousness." Environmental
Designs, Ltd. v. Union Oil Co. of Cal., 713 F.2d 693,
698, 218 USPQ 865, 869 (Fed. Cir. 1983) (citing
United States v. Adams, 383 U.S. 39, 52, 148 USPQ
479, 483-484 (1966) (The. patented process converted
all the sulfur compounds in a certain effluent
gas stream to hydrogen sulfide, and thereafter treated
the resulting effluent for removal of hydrogen sulfide.
Before learning of the patented process, chemical
experts, aware of earlier failed efforts to reduce the
sulfur content of effluent gas streams, were of the
opinion that reducing sulfur compounds to hydrogen
sulfide would not adequately solve the problem.).
"The skepticism of an expert, expressed before
these inventors proved him wrong, is entitled to fair
evidentiary weight, ... as are the five to six years of
research that preceded the claimed invention." In re
Dow Chemical Co., 837 F.2d 469, 5 USPQ2d 1529
(Fed. Cir. 1988); Burlington Industries Inc. v. Quigg,
822F.2d 1581, 3 USPQ2d 1436 (Fed. Cir. 1987) (testimony
that the invention met with initial incredulity
and Skepticism of experts was sufficient to rebut the
prima facie case of obviousness based on the prior
art).
716.06
Skepticism of Experts
Copying
Another form of secondary evidence which may be
presented by applicants during prosecution of an
application, but which is more often presented during
litigation, is evidence that competitors in the marketplace
are copying the invention instead of using the
prior art. However, more than the mere fact of copying
is necessary to make that action significant
because copying may be attribntable to other factors
such as a lack of concern for patent property or contempt
for the patentees ability to enforce the patent.
Cable. Electric Products, Inc. v. Genmark, Inc., 770
F.2d 1015, 226VSPQ 881 (Fed. Cir. 1985). Evidence
of copying was persuasive of nonobviousness when
an alleged infringer tried for a substantial length of
time to design a product or process similar to the
claimed invention, but failed and then copied the
claimed invention instead. Dow Chemical Co. v.
American Cyanamid Co., 837 F.2d 469, 2 USPQ2d
1350 (Fed. Cir. 1987). Alleged copying is not persua-
EXAMINATION OF APPLICATIONS
716.07
sive of nonobviousness when the copy is not identical
to the claimed product, and the other manufacturer
had not expended great effort to develop its own solution.Pentec,
Inc. v. Graphic Controls Corp., 776 F.2d
309,227 USPQ 766 (Fed. Cir. 1985). See also Van_
denberg v. Dairy Equipment Co., 740F.2d ·1560,
1568,224 USPQ 195, 199 (Fed. Cir, 1984) (evidence
of copying not found persuasive of nonobviousness)
and Panduit Corp. v. Dennison Manufacturing Co.,
774 F.2d 1082, 1098-99, 227 USPQ 337, 348, 349
(Fed. Cir.1985), vacated on other grounds, 475 U.S;
809, 229 USPQ 478 (1986), on remand, 810 F.2d
1561, 1 USPQ2d 1593 (Fed. Cir. 1987) (evidence of
copying found persuasive of nonobviousness where
admitted infringer failed to satisfactorily produce a
solution after 10 years of effort and expense).
716.07
Inoperability of References
Since every patent is presumed valid (35 U.S.C.
282), and since that presumption includ.es the presumption
of operability (Metropolitan Eng. Co. v.
Coe, 78 F.2d 199, 25 USPQ 216 (D.C.Cir,
1935),examiners should not express any opinion on
the operability of a patent. Affidavits or declarations
attacking the operability of a patent cited as a reference
mustrebut the presumption of operability by a
preponderance of the evidence. In re Sasse, 629 F.2d
675,207 USPQ 107 (CCPA 1980).
Further, since in a patent it is presumed that a process
if used by one skilled in the art will produce the
product or result described therein, such presumption
is not overcome by a mere showing that it is possible
to operate within the disclosure without obtaining the
alleged product. In re Weber, 405 F.2d 1403, 160
USPQ 549 (CCPA 1969). It is to be presumed also
that skilled workers would as a matter of course, if
they do not immediately obtain desired results, make
certain experiments and adaptations, within the skill
of the competent worker. The failures of experimenters
who have no interest in succeeding should not be
accorded great weight. In re Michalek, 162 F.2d 229,
74 USPQ 107 (CCPA 1947); In re Reid, 179 F.2d 998,
84 USPQ 478 (CCPA 1950).
Wherethe affidavit or declaration presented asserts
inoperability in features of the reference which are not
relied upon, the reference is still effective as to other
features which are operative. In re Shepherd,·172 F.2d
560, 80 USPQ 495 (CCPA 1949).
700-227 August 2001

716.08 MANUAL OF PATENT EXAMINING PROCEDURE
Where the affidavit or declaration presented asserts
that the reference relied upon is inoperative, the
claims represented by applicant must distinguish from
the alleged inoperative reference disclosure. In re
Crosby, 157 F.2d 198, 71 USPQ 73 (CCPA 1946). See
also In re Epstein, 32 F.3d 1559, 31 USPQ2d 18I?
(Fed. Cir. 1994) (lack of diagrams, flow charts, and
other details in the prior art references did not render
them nonenabling in view of the fact that applicant's
own specification failed to provide such detailed
iuformation, and that one skilled in the art would have
known how to implement the features of the references).
If a patent teaches or suggests the claimed invention,
an affidavit or declaration by patentee that he or
she did not intend the disclosed invention to be used
as claimed by applicant is immaterial. In re Pio, 217
F.2d 956, 104 USPQ 177 (CCPA 1954). Compare In
re Yale, 434 F.2d 66, 168 USPQ 46 (CCPA 1970)
(Correspondence from a co-author of a literature article
confirming that the article misidentified a compound
through a typographical error that would have
been obvious to one of ordinary skill in the art was
persuasive evidence that the erroneously typed compound
was not put in the possession of the public.).
716.08
See MPEP § 2107.02, for guidance on when it is
proper to require evidence of utility or operativeness,
and how to evaluate any evidence which is submitted
to overcome a rejection under 35 U.S.c. 101 for lack
of utility. See MPEP § 2107 - § 2107.03 generally for
utility examination guidelines and an overview of
legal precedent relevant to the utility requirement of
35 U.S.C. 101.
716.09
See MPEP § 2164 - § 2164.08(c) for guidance in
determining whether the specification provides an
enabling disclosure in compliance with 35 U.S.C.
112, first paragraph.
Once the examiner has established a prima facie
case of lack of enablement, the burden falls on the
applicant to present persuasive arguments, supported
by suitable proofs where necessary, that one skilled in
the art would have been able to make and use the
claimed invention using the disclosure as a guide. In
August 2001
Utility and Operability of
Applicant's Disclosure
Sufficiency of Disclosure
700-228
re Brandstadter, 484 F.2d 1395, 179 USPQ 286
(CCPA 1973). Evidence to supplement a specification
which on its face appears deficient under 35 U.S.C.
112 must establish that the information which must be
read into the specification to make it complete would
have been known to those of ordinary skill in the art.
In re Howarth, 654 F.2d 103,210 USPQ 689 (CCPA
1981) (copies of patent specifications which had been
opened for inspection in Rhodesia, Panama, and Luxembourg
prior to the U.S. filing date of the applicant
were not sufficient to overcome a rejection for lack of
enablement under 35 U.S.C. 112, first paragraph).
Affidavits or declarations presented to show that
the disclosure of an application is sufficient to one
skilled in the art are not acceptable to establish facts
which the specification itself should recite. In re
Buchner, 929 F.2d 660, 18 USPQ2d 1331 (Fed. Cir.
1991) (Expert described how he would construct elements
necessary to the claimed invention whose con"
struction was not described in the application or the
prior art; this was not sufficient to demonstrate that
such construction was well-known to those of ordinary
skill in the art.); In re Smyth, 189 F.2d 982,
90 USPQ 106 (CCPA 1951).
Affidavits or declarations purporting to explain the
disclosure or to interpret the disclosure of a pending
application are usually not considered. In re
Oppenauer, 143 F.2d 974, 62 USPQ 297 (CCPA
1944). But see Glaser v. Strickland, 220 USPQ 446
(Bd. Pat. Int. 1983) which reexamines the rationale on
which In re Oppenauer was based in light of the Federal
Rules of Evidence. The Board stated as a general
proposition "Opinion testimony which merely purports
to state that a claim or count, is 'disclosed' in an
application involved in an interference ... should not
be given any weight. Opinion testimony which purports
to state that a particular feature or limitation of a
claim or count is disclosed in an application involved
in an interference and which explains the underlying
factual basis for the opinion may be helpful and can
be admitted. The weight to which the latter testimony
may be entitled must be evaluated strictly on a caseby-case
basis."
716.10
Attribution
Under certain circumstances an affidavit or declaration
may be submitted which attempts to attribute
an activity, a reference or part of a reference to the

applicant. If successful, the activity or the reference is
no longer applicable. When subject matter, disclosed
but not claimed in a patent application filed jointly by
S and another, is claimed in a later application filed by
S, the joint patent or joint patent application publication
is a valid reference available as prior art under 35
U.S.C. 102(a), (e), or (f) unless overcome by affidavit
or declaration under 37 CPR 1.131 showing prior
invention (see MPEP § 715) or an unequivocal declaration
by Sunder 37 CFR 1.132 that he or she conceived
or invented the subject matter disclosed in the
patent or published application. Disclaimer by the
other patentee or other applicant of the published
application should not be required but, if submitted,
may be accepted by the examiner.
Where there is a published article identifying the
authorship (MPEP § 715.01(c» or a patent or an
application publication identifying the inventorship
(MPEP § 715.01(a» that discloses subject matter
being claimed in an application undergoing examination,
the designation of authorship or inventorship
does not raise a presumption of inventorship with
respect to the subject matter disclosed in the article or
with respect to the subject matter disclosed but not
claimed in the patent or published application so as to
justify a rejection under 35 U.S.c. 102(f).
However, it is incumbent upon the inventors named
in the application, in response to an inquiry regarding
the appropriate inventorship under 35 U.S.C. 102(f)
or to rebut a rejection under 35 U.S.C. 102(a)or (e),
to provide a satisfactory showing by way of affidavit
under 37 CPR 1.132 that the inventorshipofthe application
is correct in that the reference discloses subject
matter derived from the applicant rather than invented
by the author, patentee, or applicant of the published
application notwithstanding the authorship of the article
or the inventorship of the patent or published
application. In re Katz, 687 F.2d 450, 455, 215 USPQ
14, 18 (CCPA 1982) (inquiry is appropriate to clarify
any ambiguity created by an article regarding inventorship
and it is then incumbent upon the applicant to
provide "a satisfactory showing that would lead to a
reasonable conclusion that [applicant] is the ... inventor"
of the subject matter disclosed in the article and
claimed in the application).
An uncontradicted "unequivocal statement" from
the applicant regarding the subject matter disclosed in
an article, patent, or published application will be
EXAMINATION OF APPLICATIONS 716.10
accepted as establishing inventorship. In re DeBaun,
687 F.2d 459, 463, 214 USPQ 933, 936 (CCPA 1982).
However, a statement by the applicants regarding
their inventorship in view of an article, patent, or published
application may not be sufficient where there is
evidence to the contrary. Ex parte Kroger, 218 USPQ
370 (Bd. App. 1982) (a rejection under 35 U.S.C.
102(f) was affirmed notwithstanding declarations by
the alleged actual inventors as to their inventorship in
view of a nonapplicant author submitting a letter
declaring the author's inventorship); In re Carreira,
532 F.2d 1356, 189 USPQ 461 (CCPA 1976) (disclaiming
declarations from patentees were directed at
the generic invention and not at the claimed species;
hence no need to consider derivation of the subject
matter).
A successful 37 CPR 1.132 affidavit or declaration
establishing derivation. by the author, patentee, or
applicant of the published application of a first reference
does not enable an applicant to step into the
shoes of that author, patentee, or applicant of the published
application in regard to its date of publication
so as to defeat a later second reference. In re Costello,
717 F.2d 1346, 1350, 219.USPQ 389, 392 (Fed. Cir.
1983).
EXAMPLES
The following examples demonstrate the application
of an attribution affidavit or declaration.
Example 1
During the search the examiner finds a reference
fully describing the claimed invention. The applicant
is the author or patentee and it was published
or patented less than one year prior to the filing
date of the application. The reference cannot be
used against applicant since it does not satisfy the
l-year time requirement of 35 U.S.C. 102(b).
Example 2
Same facts as above, but the author or patentee is
an entity different from applicant. Since the entities
are different, the reference is prior art under 35
U.S.C. 102(a) or (e).
In the situation described in Example 2, an affidavit
under 37 CFR 1.132 may be submitted to show that
the relevant portions of the reference originated with
or were obtained from applicant. Thus the affidavit
attempts to convert the fact situation from that
700"229 August 2001

719.02(b) MANUAL OF PATENT EXAMININGPROCEDURE
(D) Correction of a claim for priority under 35
U.S.c. 120, 121, or 365(c). See MPEP § 201.11 and
§ 1302.09.
Any application that must be sent to OIPE for correction
of the file wrapper label should be accompanied
by an Office of Initial Patent Examination Data
Base Routing Slip with an explanation of the correction
to be made.
All other corrections are performed in the TC. For
example, changes to the title, power of attorney, and
correspondence address may be made with red ink.
If an error is noticed in the name or address of the
assignee, it should be corrected by the Assignment
Division.
Except as otherwise indicated, all of the above
entries are either typed or made in black ink. Such
changes by amendment as change of address or of
attorney are entered in red ink by the technical sup'
port staff of the TC, the original entry being canceled
but not erased.
719.02(b) Name or Residence of Inventor
or Title Changed
The distinction between "residence" and Post
Office address should not be lost sight of. See MPEP
§ 605.02 and § 605.03.
MPEP § p05.04(c) explains the procedure to be followed
when applicant changes name.
Unless specifically requested by applicant, the residence
will not be changed onthe file. For example, if
a new oath gives a different residence from the original,
the file will not be changed.
719.03
Classification During
Examination
When a new application is received in a Technology
Center, the classification of the application and
the initials or name of the examiner who will examine
it or other assigned docket designation are noted in
pencil in the designated spaces on the file wrapper.
These notations should be kept current.
CLASSIFICATION HISTORY BOX ENTRIES
Classifiers and examiners who review an application
for the purpose of assigning a class for examination
should indicate in CLASSIFICATION HISTORY
August 2001 700-232
box on the file wrapper that such a review took place.
The purpose for providing this information it to
reduce needless routing of applications and save
examiners' and classifiers' time. The information
should include the name and initials of each examiner
or classifier consulted, the class(es) an application
was considered for, and the date that the review took
place. No other information is permitted in this box.
These entries will not be printed on any resulting
patent publication. See MPEP § 903.07(a) for recording
consultations in the SEARCH NOTES box on the
file wrapperthat involve a question of the propriety of
the classification of subject matter and/or the need for
a cross-reference.
719.04
Index of Claims
Constant reference is made to the "Index of
Claims" found in the inside of the file wrapper of all
applications. It should be kept up to date so as to be a
reliable index of all claims standing in an application,
and of the amendment in which the claims are to be
found.
The preprinted series of claim numbers appearing
on the file wrapper refer to the claim numbers as originally
filed while the adjacent column Should be used
for the entry of the final numbering of the allowed
claims.
Independent claims should be designated in the
Index of Claims by encircling the claim number in red
ink.
A line in red ink should be drawn below the number
corresponding to the number of claims originally presented.
Thereafter, a line in red ink should be drawn below
the number corresponding to the highest numbered
claim added by each amendment. Just outside the
Index of Claims form opposite the number corresponding
to the first claim of each amendment there
should be placed the letter designating the amendment.
If the claims are amended in rewritten form under
37 CFR 1.121(a), the original claim number should
not be stricken from the Index of Claims but a notation
should be made in red ink in the margin to the left
of the original claim number, i.e., "Amend. I"; if the
claim is rewritten a second time, "Amend. I" should
be changed by striking out "I" and inserting "2"
above it.

As any claim is canceled, a line in red ink should be
drawn through its number,
A space is provided for completion by the examiner
to indicate the date and type of each Office action
together with the resulting status of each claim. A list
of codes for identifying each type of Office action
appears below the Index. At the time of allowance,
the examiner places the final patent claim numbers in
the column marked "Final."
719.05 Field of Search
In the first action on the merits of an application,
the examiner shall make an initial endorsement in
black ink, in the space provided on the right outside
panel of the file wrapper, of the classes and subclasses
of domestic and foreign patents, abstract collections,
and publications in which the search for prior art was
made. Other information collections and sources in
which the search for prior art was made must also be
identified by the examiner. The examiner must also
indicate the date(s) on which the search was conducted.
In subsequent actions, where the search is
brought up to date andlor where a further search is
made, the examiner must endorse and initial on the
file wrapper that the search has been updated andlor
identify the aditional field of search. Any search
updates should include all of the databases and the
search queries and classifications employed in the
original search. See MPEP § 904. Great care should
be taken so as to clearly indicate the places searched
and the date(s) on which the search was conducted.
In order to provide a complete, accurate, and uniform
record of what has been searched and considered
by the examiner for each application, the U.S. Patent
and Trademark Office has established procedures for
recording search data in the application file. Such a
record is of importance to anyone evaluating the
strength arid validity of a patent, particularly if the
patent is involved in litigation. These procedures will
also facilitate the printing of certain search data on
patents.
Under the procedures, searches are separated into
two categories and listed, as appropriate, in either the
"SEARCHED" box. or "SEARCHED NOTES" box
on the file wrapper.
EXAMINATION OF APPLICATIONS 719.05
I. "SEARCHED" BOX ENTRIES
Search entries made here, except those for search
updates (seeitem I(C) below), will be printed under
"Field of Search"on the patent front page. Therefore,
the following, searches will be recorded in the
"SEARCHED" box by the. examiner along with the
date and the examiner'sinitials, according to the following
guidelines:
(A) A complete search ofa subclass, including all
United States and foreign patent documents, whether
filed by U.S. or IPC classification, and other publications
placed therein. .
The complete classification (class and subclass)
should be recorded. .
Examples
424/270, 272, 273
224/42.1 F
414/DIG.4
D3/32R
A61K 9/22
A61K 31/56 - A61K 31/585
(B) A limited search ofa subclass, for example, a
search that is restticted to an identifiable portion of
the patent documents placed therein. If, however, only
the publications in asubclass are searched; such an
entry is to be made under "SEARCH NOTES" rather
than under "S,EARCHED." (See item II(D) below.)
The class and subclass, followed by the inforrnation
defining the portion of the subclass searched, in
parenthesis, should be recorded.
Examples
414/1 (U.S. only)
238/6 (1954 to date)
(C) An update ofa search previously made. This
search entry will be recorded in a manner to indicate
clearly which of the previously recorded searches
have been updated, followed by the expression
"(updated)." Search update entties, although recorded
in the "SEARCHED" box, will not be printed,
Examples
424/270 (updated)
414/DIG. 4 (updated)
Above (updated)
700,233 August2001

719.05 MANUAL OF PATENT EXAMINING PROCEDURE
When a search made in a parent application is
updated during the examination of a continuing application,
those searches updated, followed by "(updated
from parent S.N )" will be recorded. If the
parent application has been patented, the patent number
"Pat. N " instead of application number in
the above phrase will be recorded. The examiner
should recopy the entire search updated from the parent
on the file wrapper of the continuing application
to the extent pertinent to the continuing application.
Examples
273/29 BC (updated from
343/114.5 parent S.N. 08/495,123)
116/DIG,47 (updated from
D7173, 74 parent Pat. N. 4,998,999)
II. "SEARCH NOTES" BOX ENTRIES
Entries made in the "SEARCH NOTES" box are of
equal importance to those placed in the
"SEARCHED" box; however, these entries are not to
be printed on any resulting patent. They are intended
to complete the application file record of areas andlor
documents considered by the examiner in his or her
search. The examiner should record the following
searches in this box. and in the manner indicated, with
each search dated and initialled:
(A) A cursory search, or scanning, of a U.S. subclass
or IPC subclass/group/subgroup, i.e., a search
usually made to determine if the documents classified
there are relevant. Record the classification, followed
by "(cursory)."
Examples
250/13 (cursory)
A61K 9/44 (cursory)
(B) A consultation with other examiners to determine
if relevant search fields exist in their areas of
expertise.
If the subclass is not searched, record the class
and subclass discussed, followed by "(consulted)."
This entry may also include the name of the examiner
consulted and the art unit.
Examples
24/ fasteners (consulted)
24/ fasteners (consulted J. Doe A.U. 3501)
24/201 R-230 AV (consulted)
August 2001 700-234
(C) A search of a publication not located within
the classified patent file, e.g., a library search, a text
book search, a Chemical Abstracts search, etc. Record
according to the following for each type of literature
search:
(1) Abstracting publications, such as Chemical
Abstracts, record name of publications, list terms consulted
in index, and indicate period covered.
Examples
Chern. Abs, Palladium hydride Jan-June 1975
Eng. Index, Data Conversion Analog to Digital
1975
(2) Periodicals - list by title and period or
volumes covered, as appropriate.
Examples
Popular Mechanics, June-Dec. 1974
Lubrication Engineering, vols. 20-24
(3) Books - list by title and author, edition or
date, as appropriate.
Example
Introduction to Hydraulic Fluids, Roger E. Hatton,
1962
(4) Other types of literature not specifically
mentioned herein (i.e., catalogs, manufacturer's literature,
private collections, etc.).
Record data as necessary to provide unique
identification of material searched.
Example
Sears Roebuck catalog, Spring-Summer, 1973.
Where a book or specific issue of a periodical
is cited by the examiner, it is not necessary to list the
specific book or periodical in the "SEARCH NOTES"
box.
A cursory or browsing search through a number
of materials that are not found to be of significant
relevance may be indicated in a collective manner,
e.g., "Browsed STIC shelves under QA 76.5" or
"Browsed text books in STIC relating to
......................" More detailed reviews or searches
through books and periodicals or any search of terms
in abstracting publications should be specifically
recorded, however.

(5) Computer Search in Scientific and Technical
Information Center (ST/C) - An online computerizedliterature
searching service which uses key
terms and index terms to locate relevant publications
in many large bibliographic data bases is available in
the STIC. Members of the STIC staff are assigned to
assist examiners in selecting key terms and to conduct
a search. To record a computer search conducted by
STIC, see instructions in II(F) below.
(D) A search of only the publications in a subclass.
Record class and subclass followed by "(publications
only)."
Examples
43/56 (publications only)
99/DIG. 15 (publications only)
(E) A review ofart cited in a parent application
or an original patent, as required for all continuation
and continuation-in-part applications, divisional
applications, reissue applications and reexamination
proceedings, or a review of art cited in related applications.
Record the application number of a parent application
that is still pending or abandoned, followed by
"refs. checked" or "refs. ck'ed." If for any reason not
all of the references have been checked because they
are not available or clearly not relevant, such exceptions
should be noted.
Examples
S. N. 495,123 refs. checked
S. N. 490,000 refs. checked
S. N. 480,111 refs. checked except for Greek
patent to Kam
S. N.4lO,l13 refs. not checked since the file was
not available
Record the patent number of a parent or related
application that is now patented or of an original
patent now being reissued with "refs. checked" or
"refs. ck'ed."
Examples
Pat. 3,900,000 refs. checked
Pat. 3,911,111 refs. ck'ed
(F) In each action involving a search of a computer
accessed text or chemical structure or sequence
database, the examiner shall endorse, in the SEARCH
EXAMINATION OFAPPLICATIONS 719.05
NOTES box on the file wrapper flap, the name of the
database service, the date when the search was made
or was brought up to date and the examiner's initials.
All entries shall be made in BLACK INK. Computer
database searches including text, chemical structure,
or sequences shall be documented in the SEARCH
NOTES box on the file wrapper by providing the following
minimum information:
(l) The search logic or chemical structure or
sequence used as a query;
(2) The name of the file or files searched and
the database service;
(3) Date of the search; and
(4) The examiner's initials.
Three ways in which this minimum documentation
can be provided are:
(1) supplying, and as necessary annotating, the
computer search printout resulting from a computer
assisted search (see examples 1 and 2 and "Printouts"
below), or
(2) recording the required information on the
Search Request Form PrO-1590, or
(3) recording the required information in the
SEARCH NOTES box.
For methods (1) and (2), the name of the database
service and the expressions "(see form)" or "(see
printout)" should be recorded in the SEARCH
NOTES box as appropriate with the date and the
examiner's initials.
Printouts
Most of the database services accessed in application
searches provide a command to display or print
the search history which includes most, if not all, of
the minimum required information for documenting
database searches. Table 1 below lists the history
command for each database service and which of the
required minimum documentation elements are missing
when the history command is entered. The missing
elements may be documented by writing them on
the printout of the search history or by supplying further
portions of the search transcript which do include
the missing elements. In some instances, depending
on the database service, the log off command will
supply the missing data element. A printout of the history
command and log out response containing the
required data elements is acceptable as full documentation
of a search. For example, this is the case with
700-235 August 2001

719.05 MANUAL OF PATENT EXAMINING PROCEDURE
the STN and Questel; the name of the database service
is not provided by entering the history command
and must be supplied by the inclusion of the log off
command. Another example is with WEST. Neither
the Freeform Search page nor the Show S Numbers
page prints the date of the search, therefore, the date
of the WEST search must be documented in writing.
August-200l
700-236
If there are several search statements in the history,
the statement or statements of which the results were
reviewed should be indicated by circling them in
BLACK INK. The form or printout page(s) with the
required data elements should be hole punched and
placed in the application file on the right hand flap of
the file wrapper.

TABLE I
History Commands and Missing Elements
by Database Service
Data- His- Name Search Name Date of
base tory of Logic ofFile Search
Ser- Com- Data- Searchvice
mand base ed
Service
Dialog ds2 no . yes miss- misstng?
ing3 STN 1 dhis no' yes yes yes
full
Orbit his2 no' yes miss- missing7
ing 2
Ques- hi Z no' yes yes misstel
ing 3
Mead ,2 no yes yes yes
IG none yes 3
Suite
EXAMINAnON OF APPLICAnONS 719.05
yes4 yes yes
Details nolO yes yes yes
EAST grid 8
WEST Free yes yes yes miss-
Form ing ll
Search
page 9
Show
S
Numbers
page
t In a structure search in STN, in addition to "dhis full",
the structure shouldbe'printed out while in the RegistryFile.
The command string for this is "d L# que stat," whereL#is
the numberofthe answerset of a full file structure search.
2 Need to enterhistorycommand for each file searched
before changing file or logging off.
3 Information providedas part of searchresultfile for each
request
4 Searchquery sequenceprovided as part of searchresult
file for each request.
s Displayed bylogoffcommand.
6 Name andnumber of-file providedatfile entry; number
only of file given when leaving the file; number onlyof last
file accessed given at logoff.
7 Name of the file given atfile entryandwhen-leaving the
file; name of last file accessed given at log off.
.
8
Print details gridfor Active folder to documentcurrent
search; printDetails gridfor Saved folderto document saved
search.
9 PrintFreeform Searchpage to documentcurrent search;
printShow S Numbers page to documentsaved search.
10
Shown on printed EAST cover page.
11 Mustbe written in BLACK INK.
Explanation ofTable Terminology
History Command - Generally, a display of what
the user has asked the search software to do. Will display
the search logic entered by the user. Some histories
are limited to display of the searches done only in
the current file while others deliver a complete record
of what file or files were accessed and all searches
done since sign on. Dialog, Questel, Orbit, and Mead
are services limited to display of the searches done
only in the current file.
Name of Database Service - Most services do not
display this information as part of the search transcript.
None of the services in the table, except
WEST, list that information as part of the history
command. However, Orbit, Questel, and STN supply
the name of the database service during log off.
Search Logic - Generally, a display of the search
commands executed by the search software. For a
700-237 August2001

719;05 MANUAL OF PATENT EXAMINING PROCEDURE
structure or sequence search, this can be a printout of
the structure or sequence used to query thesystem.
Name of File Searched - This is the name of the
collection of data accessed. In some services; the file
name is only displayed when the file is selected and
not in response to the history display command; Dialog
and Orbit are two such services. For example,
Dialog supplies only the file number with thelog off
command. The file number alone is not adequate documentation
of a search. The name of the file is
required.
Date of Search - WEST, Dialog, Orbit, andQuestel
do not display the date of search as part of the history
command. Dialog, Orbit, and Questel supply the date
of search during log off; the date of search for WEST
must be written on the search report.
Nucleotide and peptide sequence searches will be
fully documented by a printout of the search query
sequence and the beginning of the search result file.
Each query sequence should be clearly related to the
appropriate search result, if necessary, by appropriate
annotation.
Other Databases
For other types of publicly accessible computer
accessed databases (e.g., CD-ROM databases, spe-
August 2001
700-238
cialized databases, etc.), record data as necessary to
provide unique identification of material searched and
sufficient information as to the search query or
request so that the search can be updated. The record
should also document the location of the database and
its form (CD-ROM, etc.)
Example: Citing abiotech CD-ROM database
Entrez: Sequences, National Center for Biotechnology
Information, Version 7.19.91b (CD-ROM,
TC 1600) Searched HIVand vaccine; neighbored
Galloway article dated 6/5/91 on April 1, 1990.
Example: Citing a nonbiotech CD-ROM
database
Computer Select, (November, 1991), Ziff Davis
Communications Co., (CD-ROM, STIC),
Searched Unix and emulation on December 1,
1991.
III. INFORMATION NOT RECORDED ON
THE FILE WRAPPER
For an indication of consideration or nonconsideration
of prior art citations submitted by applicant in
Information Disclosure Statements (37 CFR 1.97 and
1.98), see MPEP § 609:

719.06
See MPEP § 201.l4(c),§ 202.03 and § 201.l4(d).
719.07
Foreign Filing Dates
Related Applications
The file wrapper or the PALM bib-data sheet (for
09/series applications) should identify earlier filed
related applications.
See MPEP § 202.02 and § 202.03.
720 Public Use Proceedings
37 CFR 1.292. Public use proceedings.
(a) When a petition for the institution ofpublic use proceedings,
supportedby affidavitsor declarationsis found, on reference
to the examiner, to make a prima facie showing that the invention
claimed in an application believed to be on file had been in public
use or on sale more than one year before the filing of,the application,
a hearing may be had beforethe Commissioner to determine
whether a public use proceeding should be instituted. Ifinstituted,
the Commissioner may designate an appropriate official to conduct
the public use proceeding, including the setting of times for
taking testimony, which shall be taken as provided by §§.1.671
through 1.685. Thepetitioner will be heard in the proceedings but
after decision therein will'not be heard further in the prosecution
of the application for patent.
(b) The petition and accompanying papers, or _a notice that
such a petition has been filed, shall be entered in the application
file if: '
(1)' The petition is accompanied by the fee set forth in
§ 1.17(j);
(2) The petition is served on the applicant in accordance
with § 1.248, or filed with the Office in duplicate in the evennservice
is-not possible; and
(3) The petition is submitted prior to the date the application
was published or the mailing of a notice of allowanceunder, §
1.1'11, whichever occurs first.
(c) A petition, for institution of public use proceedings shall
not be filed by a' party to an' interference' as to an' application
involved in the interference. Public use and on sale- issues in an
interference shall be raised by a preliminary motion under §
1.633(.). '
Public use proceedings are provided for in 37 CFR
1.292. The institution ofpublic use proceedings is discretionary
with the Commissioner. This section is
intended to provide guidance when a question con"
cerning public use proceedings arises.
Any member of the public other than the applicant,
including private persons, corporate entities, and government
agencies, .may file a petition under 37 CFR
1.292. A petition maybe filed by an attorney or other
representative on behalf of an unnamed principal
since 37 CFR 1.292 does not require that the principal
EXAMINATION OF APPLICATIONS 720
be identified. A petition and fee (37 CFR 1.17(j)) are
required to initiate consideration ofwhether to institute
a public use proceeding. The petitioner ordinarily
has information concerning a pending application
which claims, in whole or in part, subject matter that
the petitioner alleges was in "public use" or "on sale"
in this country more than one year prior to the effective
United States filing date of the pending application
(see 35 U.S.C. 119 and 120). He or she thus
asserts that a statutory bar (35 U.S.C. 102(b) alone or
in combination with 35 U.S.C. 103) exists which prohibits
the patenting of the subject matter of the application.
When public use petitions and accompanying
papers are submitted they, or a notice in lieu thereof,
will be entered in the application file if the petition is;
(A.) accompanied by the fee set forth in 37 CFR
1.i7(j);
(B) servedon the applicant in. accordance with
37CFR,1.248, or filed with the Office in duplicate in
thyeventservice is not possible; and
(C) subrnitted prior to the mailing of a notice of
allowance under 37 CFR 1.311.
Duplicate copies should be submitted only when,
after diligent effort, it has not been possible for petitioner
to serve a copy of the petition on the applicant,
or his or her attorney or agent in accordance with 37
CFR 1.248 in which case the Office ofPatent Legal
Adrninistration of the Office of the Deputy Cornrnissioner
for Patent Examination Policy will attempt to
get the duplicate copy to the applicant, or his or her
attorney or agent.
Notice of a petition fora public use proceeding will
be entered in the file in lieu of the petition itself when
the petition and the accompanying papers are too
bulky to accompany the file. Any public use papers
not physically entered in the file will be publicly
available' whenever the application file wrapper is
available.
There are two types of public use proceedings: ex
parte and inter partes. It is important to understand
thedifference. In the ex parte situation, the petitioner
is not entitled, as a matter ofright, to inspect the pending
application. Thus, he or she stands in no better
position than any other member of the public regard"
ing access to the pending application. In the inter
partes situation, the pending application is a reissue
700-241 August 2001

720 MANUALOF PATENT EXAMINING PROCEDURE
application. In the interpartes situation, the petitioner
is privy to the contents of the pending application (37
CPR L612). Thus, as pointed out below, the petitioner
in the inter partes situation participates in the public
use proceedings to a greater degree than in the ex
parte situation. A petitioner who was once involved in
a terminated interference with a pending application is
no longer privy to the application contents and will
accordingly be treated as an ex parte petitioner. It
should be noted that petitions filed on and after February
11, 1985 will not be allowed .in accordance.with
37 CPR L292(c) unless the petition arises out ofan
interference declared prior to February II, 1985 or the
interference was declared, after February 11, 1985,but
arose from an interference declared prior tothat,date.
Since February 11, 1985,'a petitionfor.institution
of public use proceedings cannot be filed by a party
to an interference as to an application involved in the
interference. Public use issues can only be raised by a
preliminary motion under 37 CFR L633(a). However,
iftheissue of pnblicuse arises out ofall interference
declared prior to February 11, 1985, the petitionmay
be filed by a party to the interference as toan application
involved in the interference.
There may be cases where a public use petition has
been filed in an application which has been restricted
oris subject to a proper restriction, requirement. If the
petition alleges that subject matter covering both
elected claims and nonelected .claims is a statutory
bar, only that part of the petition drawn to subject matter
of the elected claims will be considered. However,
if 11 public use proceeding is ultimately instituted, it
will not necessarily be limited to the subject matter of
the elected claims but may include the nonelected
subject matter, Any evidence adduced on the nonelected
subject matter may be used in any subsequently-filed
.application claiming subject matter
without the requirement of anew fee (37 CPR
Ll7(j». The petitioner will notbe heard regarding the
appropriateness of any restriction requirement.
A petition under, 37 CPR L292 must be submitted
in writing, must specifically identify the application to
which the petition is directed by application number
or serial number and filing date, and should include a
listing of all affidavits or declarations and exhibits
relied on. The petition must contain a sufficient
description of the subject matter that the petitioner
alleges was in "public JISe" or "on sale," including any
August 2001
700-242
necessary photographs, drawings, diagrams, exits, or
flowcharts, to enable the examiner to compare the
claimed subject matter to the subject matter alleged to
have been in "public use',' or "on sale." In addition,
the petition and any accompanying papers must either
(A) reflect that a copy of the same has been served
upon the applicant or upon the applicant's attorney or
agent of record; or (B) be filed with the Office in
duplicate in the event service is not possible.
It is important that any petitionin apending application
specifically identify the application to which
the petition is directed with the identification being as
complete as possible. The following information, if
known, should be placed on the petition:
(A) Nameof Applicant(s).
(B) Application number.
(C) Confirmation number.
(D) Filing date of application.
(E) Title of invention,
(F) Technology Center art unit number.
(0) Name ofexaminer to whom the application is
assigned.
(lIYCul'rent status and location of application.
(I) The word "ATTENTION:" followed by the
area of the Office to which the petition is directed as
set forth below.
In addition, to, the above information, the petition
itself should be clearly identified as a "PETITION
UNDER, 37CPRL292." If the petition is accompahied'
by exhibits or other attachments, these should'
also contain identifying information thereon in order
to prevent them from becoming inadvertently separated
and lost.
Any petition under 37 CPR L292 can be submitted
by mail to the Assistant Commissioner for Patents,
Washington, D.C. 20231, and should be directed to
the attention of the director of the particular TechnologyCenter
(TC) in which the application is pending.
If the petitioner is unable to specifically identify the
application to which the petition is directed.ibut, nevertheless,
believes such an application to be pending,
the petition should be directed to the attention of the
Office of Patent Legal Administration of the Office of
the', Deputy Commissioner for Patent Examination
Policy or to "Box DAC," along with as much identifying
data for the application as possible.

Where a petition is directed to a reissne application
for a patent which is involved in litigation, the outside
envelope and the top right-hand portion of the petition
should be marked with the words "REISSUE LI'TI­
GATION." The notations preferably should be written
in a bright color with a felt point marker. Any "REIS"
SUE LITIGATION" petition mailed to the Office
should be so marked and mailed to "Box DAC."
However, in view of the urgent nature of most "REIS­
SUE LI'TIGATION" petitions, petitioners may wish to
hand-carry the petition to the appropriate area in order
to ensure prompt receipt and to avoid any unnecessary
delays. In litigation-type cases, all responses should
be hand-carried to the appropriate area in the Office.
Every effort should be made by a petitioner to
effect service of the petition upon the attorney or
agent of record or upon the applicant if no attorney or
agent is of record. Of course, the copy served upon
applicant or upon applicant's attorney or agent should
be a complete copy including a copy ofeach photograph,
drawing, diagram, exhibit, flowchart, or other
document relied on. The petition filed in the Office
should reflect, by an appropriate "Certificate of Service,"
that service has been made as provided in 37
CFR 1.248. Only in those instances where service is
not possible should the petition be filed in duplicate in
order that the Office can attempt service. In addition,
all other papers filed by the petitioner relating to the
petition or subsequent public use proceeding must be
served in accordance with 37 CPR 1.248.
720.01 Preliminary Handling
A petition filed under 37 CPR 1.292 should be forwarded
to the Office of Patent Legal Administration
(OPLA) of the Office of the Deputy Commissioner
for Patent Examination Policy. A member of the
OPLA staff will ascertain whether the formal requirements
of 37 CPR 1.292 have been fulfilled. In particular,
the petition will be reviewed to see whether the
petition has been filed prior to the mailing of a notice
of allowance under 37 CPR 1.311, if the alleged use
or sale occurred in this country more than I year
before the effective filing date of the application,
whether the petition contains affidavits or declarations
and exhibits to establish the facts alleged, whether the
papers have been filed in duplicate, or one copy has
been served on applicant and whether the required fee
has been tendered. The application file is ordered and
EXAMINATION OF APPLICATIONS 720.01
its status ascertained so that appropriate action may be
taken.
A petition under37 CPR 1.292 must be "submitted
prior to the mailing of a notice of allowance under 37
CPR 1.311." As a practical matter, any petition should
be submitted as soon as possible after the petitioner
becomes aware of the existence of the application to
which the petition is to be directed. By submitting a
petition early in the examination process, i.e., before
the Office acts on the application if possible, the petitioner
ensures that the petition will receive maximum
consideration and will be of the most benefit to the
Office in its examination of the application.
Since a petition under.37 CFR 1.292 cannot be considered
subsequent to issuance of the application as a
paterit or abandonment of the application, the petition
will not be consideredif the application is not pending
when the petition and application are provided to the
member of the OPLA staff (i.e., that the application
was pending at the time the petition was filed would
be irnrriaterial to its ultimate consideration). A petition
submitted prior to the mailing of a notice of allowance
under 37 CFR 1.311, but not provided to the member
of the OPLA staff with the application file prior to
issuance or abandonment of the application, will be
entered in the application file, but will be dismissed as
moot. A petition filed after final rejection will be considered
if the application is still pending when the
petition and application are provided to the member
of the OPLA staff. However, prosecution will not
ordinarily be reopened after final rejection ifthe subject
matter alleged in the petition to have been in
"public use" or "on sale" is merely cumulative of the
prior art cited in the final rejection. If a petition is
filed after the mailing of a notice of allowance under
37 CPR 1.311, it will be dismissed as untimely.
A petition with regard to a reissue application
should be filed within the 2-month period
following announcement. of the filing of the
reissue application in the Official Gazette. If,
for some reason, the petition cannot be filed within
the 2"month period provided by 37 CFR l.l76, the
petition can be submitted at a later time, but petitioner
must be aware that reissue applications are "special"
and a later filed petition may be received after action
by the examiner. Any request by a petitioner in a reissue.application
for an extension of the 2-month period
following the announcement in the Official Gazette
700-243 August 2001

720.02 MANUAL OF PATENT EXAMINING PROCEDURE
will be considered only if filed in the form ofa petition
under 37 CPR 1.182 and accompanied by the
petition fee set forth in 37 CPR 1.17(h). The petition
must explain why the additional time is necessary and
the nature of the allegations to be made in the petition.
A copy of such petition must be served upon applicant
in accordance with 37 CPR 1.248. The petition should
be directed to the appropriate Technology Center
(TC). Any such petition will be criticallyreviewed as
to demonstrated need before being granted since the
delay of examination of a reissue application of
another party is being requested. Accordingly, the
requests should be made only where necessary, for the
minimum period required, and with a justification
establishing the necessity for the extension.
If the petition is a "REISSUE LITIGATION" petition,
it is particularly important that it be filed early if
petitioner wishes it considered prior to the first Office
action on the application. Petitioners should be aware
that the Office will entertain petitions under.37 CPR
1.183, when accompanied by the petition fee set forth
in 37 CPR 1.17(h), to waive the 2-month delay period
of 37 CPR 1.176 in appropriate circumstances.
Accordingly, petitioners in reissue applications cannot
automatically assume that the full 2-month delay
period of 37 CPR 1.176 will always be available.
In those ex parte situations where a petitioner cannot
identify the pending application by application
number, the petition papers will be forwarded to the
appropriate TC Director for an identification search.
Once the application file(s) is located, it should be
forwarded to the OPLA.
If the petition filed in the Office does not indicate
service on applicant or applicant's attorney or agent,
and is not filed in duplicate, then the Office will
undertake to determine whether or not service has
been made by contacting applicant or applicant's
attorney or agent by telephone or in writing to ascertain
if service has been made. If service has not been
made and no duplicate has been filed, then the Office
may request petitioner to file such a duplicate before
the petition is referred to the examiner. Alternatively,
if the petition involves only a few pages, the Office
may, in its sole discretion, elect to reproduce the petition
rather than delay referring it to the examiner. If
duplicate petition papers are mailed to applicant or
applicant's attorney or agent by the Office, the application
file should reflect that fact, either by a letter
August 2001 700-244
transmitting the petition or, if no transmittal letter is
used, simply by an appropriate notation in the "Contents"section
of the application file wrapper.
If the petition is not submitted prior to the mailing
of a notice of allowance under 37 CPR 1.311, it
should not be entered in the application file. The
applicant should be notified that the petition is
untimely and that it is not being entered in the application
file. The handling of the petition will vary
depending on the particular following situation.
(A) Service OfCopy Included
Where the petition includes an indication of service
of copy on the applicant, the original petition
should be discarded.
(B) Service OfCopy Not Included
Where the petition does not include an indication
of service and a duplicate copy of the petition is or is
not present, the duplicate copy (if ,present) should be
discarded and the original petition should be sent to
the applicant along with the notification of nonentry.
720.02 Examiner Determination
Prima Facie Showing
Once the Office of Patent Legal Administration
(OPLA) staff member has determined that the petition
meets the formal requirements of 37 CPR 1.292, and
the application's status warrants consideration of the
petition, he or she will prepare a letter for the Patent
Legal Administrator, forwarding the petition and the
application file to the examiner for determination of
whether a prima facie case of public use or sale in this
country of the claimed subject matter is established by
the petition. Any other papers that have been filed by
the parties involved, such as a reply by the applicant
or additional submissions by the petitioner, will also
be forwarded to the examiner. Whether additional
papers are accepted is within' the discretion of the
OPLA staff member. However, protracted paper filing
is discouraged since the parties should endeavor to
present their best case as to the primafacie showing at
the earliest possible time. No oral hearings or interviews
will be granted at this stage, and the examiner is
cautioned not to answer any inquiries by the petitioner
or applicant.
A prima facie case is established by the petition if
the examiner finds that the facts asserted in the affidavit(s)
or declaration(s), as supported by the exhibits, if
of

",,If''--_
later proved true by testimony taken in the public use
proceeding, would reslllt in a statutory bar to .the
claims under 35 U.S.C. 102(b) alone or in combination
with 35 U.S.C. 103. See MPEP § 2133.03 et seq.
To make this determination, the examiner must
identify exactly what was in public use or on sale.
whether it was in use or on sale in this country more
than I year before the effective filing date, and
whether the pending claims "read" on or are obvious
over what has been shown to be in public use or on
sale. On this last point, the examiner should compare
all pending claims with the matter alleged to have
been in use or on sale, not just the claims identifiedby
petitioner.
In situations where the petition alleges only that the
claims are obvious over subject matter asserted to be
in public use or on sale, the petition should include
prior art or other information on which it relies and
explain how the prior art or other information in com,
bination with the subject matter asserted to be in pub,
lie use or on sale renders the claims obvious. The
examiner is not expected to make a search of the prior
art in evaluating the petition. If, however, the examiuer
determines that a prima facie case of anticipation
under 35 U.S.C. 102(b) has not been established but,
at the time of evaluating the petition, the examiner is
aware ofprior art or other information which, in his or
her opinion, renders the claims obvious over the subject
matter asserted to be in public use or on sale the
examiner may determine that a prima facie case is
made out, eveu if the petition alleged only that the
claims were anticipated under 35 U.S.C. 102(b).
After having made his/her determination, the examiner
will forward a memorandum to the Patent Legal
Administrator, stating his or her findings and his or
her decision as to whether a prima facie case has been
established. The findings should include a summary
of the alleged facts, a comparison of at least one claim
with the device alleged to be in public use oron sale,
and any other pertinent facts which will aid the Patent
Legal Administrator in conducting the preliminary
hearing. The report shollld be prepared in triplicate
and addressed to the Patent Legal Administrator.
720.03
Preliminary Hearing
Where the examiner concludes that a prima facie
showing has not been established, both the petitioner
and the applicant are so notified by the Office of the
EXAMINATION OF APPLICATIONS 720.04
Deputy Commissioner for Patent Examination Policy
and theapplication proceedings are resumed without
giving the parties an opportunity to be heard on the
correctness of the examiner's decision. Where the
examiner concludes that a prima facie case has been
established,the Commissioner may hold a preliminary
hearing. In such case, the parties will be notified
by letter of the examiner's conclusion and of the time
and date of the hearing. In ex parte cases, whether or
not the examiner has concluded that a prima facie
showing has beenestablished, no copy of the examiner's
memorandum to the Patent Legal Administrator
will be forwarded to the petitioner. However, in such
cases where the petition covers restrictable subject
matter and it is evident that petitioner is not aware ofa
restriction requirement which has been or may be
made, petitioner will be informed that the examiner's
conclusion is limited to elected subject matter. While
not so specifically captioned, the notification of this
hearing amounts to an order to show cause why a public
use proceeding should not be held. No new evi-.
dence is to be introduced or discussed at this hearing.
The format of the hearing is established by the member
of the Office of PatentLegal Administration staff,
and the Patent Legal Administrator presides. The
examiner may attend as an observer only.
Where the hearing is held in the ex parte situation,
great care will be taken to avoid. discussion of any
matters of the application file which are not already of
knowledge to petitioner. Of course, applicant may of
his or her own action or consent notify the petitioner
of the nature of his or her claims or other related matters.
After the hearing is concluded, the Patent Legal
Administrator will decide whether public use proceedings
are to be initiated, and he/she will send
appropriate notice to the parties.
720.04
Public Use Proceeding Testimony
When the Patent Legal Administrator decides to
institute public use proceedings, the application is
referred to the examiner who will conduct all further
proceedings. The fact that the affidavits or declarations
and exhibits presented with the petition for institution
of the public use proceedings have been held to
make out a prima facie case does not mean that the
statutory bar has been conclusively established. The
700.245 August 2001

720;05 MANUALOF PATENT EXAMINING PROCEDURE
statutory bar can only be established by testimony
taken in accordance with normal rules of evidence,
including the right ofcross-examination. The affidavits
or declarations are not to be considered part of the
testimony and in no case can they be used as evidence
on behalf of the party submitting them unless the affidavits
or declarations are submitted as a part of the
petitioner's testimony.
The procedure for taking testimony in a public use
proceeding is similar to that for taking testimony in an
interference.Normally, no representative of the Commissioner
need be present at the taking of thetestimony.
Note that 37 CFR 1.672(a) limits
noncompelled direct, testimony to affidavits. See 37
CFR 1.601(b) for the meaning of affidavit.
The examiner willset a schedule of times for taking
testimony and for filing the record and briefs on the
basis of the following:
SCHEDULE FOR TESTIMONY
(A) 'Iestimonyfor petitioner to close .
[specify a date, e.g., January 10, 1997, which is
approximately 60 days afterthe letter]
(B) Time for the applicant to, file, objections to
admissibility ofpetitioner's evidence to close .
[specify a date which is approximately 20 days after
date (A)]
(C) Time for the petitioner to file supplemental
evidence to overcome objections to close 20 days
from above date, i.e., .
[specify a date which is exactly 20 days after date (B),
unless the date is a Saturday, Sunday or federal holiday,
in which case use the next business day]
(D) Time for the applicant to request cross-examinatiou
of the petitioner's affiants to close .... : : ...
[specify a date which is approximately 20 days after
date (C)]
(E) Time for cross-examination of thepetitioner's
affiants to close .
[specify a date which is approximately 30 days after
date (D)]
(F) Rebuttal testimony by applicant to close .....
[specify a date which is approximately 20 days after
date (E)]
August2001 700-246
SCHEDULE FOR FILING AND SERVING
COPIES OF RECORD AND BRIEFS
One copy of eachof the petitioner's and the applicant's
record andexhibits (see 37CFR 1.653) is due.
[specify a date which is approximately 30 days after
date (F)]
Petitioner's brief is due .
[specify a date which is approximately 30 days after
previous date]
Applicant's briefis due .
[specify a date which is approximately 20 days after
previous date]
Applicant and petitioner may agree on a different
. schedule for testimony, records, and briefs, provided
the last brief is due no later than the date set forth
above and provided a copy of the new schedule is
filed by either applicant or petitioner. No extension of
time will be permitted under 37 CFR 1.136(a). Any
petition to extend the time for filing the lastbrief must
be filed under 37 CFR 1.l36(b).
A certified transcript of a deposition must be filed
in the U.S. Patent and Trademark Office within one
month after the date of deposition. 37 CFR 1.678.
All papers in the public use proceeding shall be
served in accordance with 37 CFR 1.248.
It is understood from the above scheduling of times
that a given time period beginswith the close of the
previous period, and that the completion of testimony
or the filing of the record or a brief before the close of
the corresponding period does not change its closing
date. To avoid confusion, the examiner should indicate
specific dates for the close of each period.
In ex parte cases and in interpartes cases where the
pending application is a reissue, all oral hearing is
ordinarily not held.
In all public use proceedings, whether the ultimate
issue isanticipation under 35 U.S.C. 102(b) or obviousness
over 35 U.S.C. 103, testimony will be limited
to the issuesof public use or on sale. No testimony
will be received on whether the claimed 'subject matter
would have been obvious over subject matter
asserted to be in public use oron sale.
720.05
Final Decision
The final decision of the examiner should be "analogous
to that rendered by the [Board of
Patent Appeals and Interferences] in an interference

proceeding, analyzing the testimony" and stating conclusions.
In re Townsend, 1913 C.D. 55, 188 O.G. 513
(Comm'r Pat. 1913). In reaching his or her decision,
the examiner is not bound by the prior finding that a
prima facie case has been established.
If the examiner concludes that a public use or sale
bar exists, he or she will enter a rejection to that effect
in the application file, predicating that rejection on the
evidence considered and the findings and decision
reached in the public use proceeding. Even if a rejection
is not made, the examiner's written action should
reflect that the evidence of 35 U.S.C. 102(b) activity
has in fact been considered. Likewise, if the examiner
concludes that a prima facie case (A) has not been
established, or (B) has been established and rebutted
(MPEP § 2133.03(e) et seq.) then the examiner's written
action should so indicate..Strict adherence to this
format should cause the rationale employed by the
examiner in the written action to be self-evident. In
this regard, the use of reasons for allowance pursuant
to 37 CPR 1.104(e) may also be appropriate. See
MPEP § 1302.14. In ex parte cases where the petitioner
does not have access to the file, no copy of the
examiner's action is mailed to the petitioner by the
Office.
There is no review from the final decision of the
examiner in the public use proceedings. A petition
under 37 CPR 1.181, requesting that the Commissioner
exercise his or her supervisory authority and
vacate the examiner's decision, will not be entertained
except where there is a showing of clear error. See Ex
parte Hartley, 1908 C.D. 224, 1360.Cl 1767
(Comm'r Pat. 1908). Once the application returns to
its ex parte status, appellate review under 35 U.S.c.
134 and 141-145 may be had of any adverse decision
rejecting claim(s), as a result of the examiner's decisions
as to public use or sale.
724 Trade Secret, Proprietary, and
Protective Order Materials
Situations arise in which it becomes necessary, or
desirable, for parties to proceedings in the Patent.and
Trademark Office relating to pending patent applications
or reexamination proceedings to submit to the
Office trade secret, proprietary, and/or protective
order materials. Such materials may include those
which are subject to a protective or secrecy order
issued by a court or by the International Trade Com-
EXAMINATION OF APPLICATIONS 724
mission (lTC). While one submitting materials to the
Office in relation to a pending patent application or
reexamination proceeding must generally assume that
such materials will be made of record in tile'file and
be made public, the Office is not unmindful of the difficulties
this sometimes imposes. The Office is also
cognizant of the sentiment expressed by the court in
In re Sarkar, 575 F.2d 870, 872, 197 USPQ788, 791
(CCPA 1978),which stated:
[T]hat wherever possible, trade secretlaw andpatent laws
should be- administered in -such manner-that the-former
wilInot deter-an-inventor.from seeking the benefit of the
latter, because, the public is most benefited by the early
disclosure of the invention in consideration of the patent
grant. If a patent applicant is unwilling to pursue his right
to a patent attheriskof certain loss of trade secretprotection,
the, two systems will conflict, the public will be
deprived of knowledge of the invention in many cases,
and inventors will be reluctant to bring, unsettled legal
questions of significant current interest . . . forresolution.
Parties bringing information to the attention of the
Office for use in the examination ofapplicationsand
reexaminations are frequently faced with the prospect
ofhaving legitimate trade secret, proprietary, or protective
order material disclosed to the public.
Inventors and others covered by 37 CPR 1.56(c)
and 1.555 have a duty to disclose to the Office information
they are aware of which is material to patentability.
37 CPR 1.56(b) states that
information is material to patentability when it is not
cumulative to information already of record or being
madeof record in theapplication, and
(1) It establishes, by itself or in combination with other
information, a prima facie case of unpatentability of a
claim; or
(2) It refutes; oris inconsistent with, a position the applicanttakes
in:
(i) Opposing an argument of unpatentability relied on by
theOffice,or
(ii) Asserting an argument of patentability.
A prima facie case of unpatentability is established when
the information compels a conclusion that a claim'is
unpatentable under the preponderance of evidence, burden-of-proof
standard, giving each term in the claim
its broadest reasonable construction consistent with
thespecification; and beforeanyconsideration is 'given to
700-247 August 2001

724.04 MANUAL OF PATENT EXAMINING PROCEDURE
724.04
The exact methods of treating and handling materials
submitted under MPEP § 724.02 will differ
slightly depending upon whether the materials are
submitted in an original application subject to the
requirements of 35 U.S.C. 122 or whether the submission
is made in a reissue application or reexamination
file open to the public under 37 CFR 1.11(b) or (d).
Prior to publication, an original application is not
open to the public under 35 U.S.c. l22(a). After the
application has been published under 35 U.S.c.
l22(b)(1), copies of the file wrapper of the pending
application are available to any member of the public
who has filed a request under 37 CFR 1.14(c)(2). See
MPEP § 103. In any event, Office personnel must not
disclose such materials to the public without authorization.
Upon receipt of the submission, the transmittal
letter and the envelope or container will be date
stamped and brought to the attention of the examiner
or other Office employee responsible for evaluating
the submission. The receipt of the transmittal letter
and envelope or container will be noted on the "Contents"
of the application or reexamination file. In
addition, the face of the application or reexamination
file will have the notation placed thereon to indicate
that trade secret, proprietary, or protective order material
has been filed. The location of the material will
also be specified. The words "TRADE SECRET
MATERIALS FILED WIDCR ARE NOT OPEN TO
PUBLIC" on the face of the file are sufficient to indicate
the presence of trade secret material. Similar
notations will be made for either proprietary or protective
order materials.
724.04(a) Materials Submitted in an
Application Covered by
35 U.S.C. 122
Any materials submitted under MPEP § 724.02 in
an application covered by 35 U.S.C. 122 will be
treated in the following manner:
(A) The submitted material will be maintained in
the original envelope or container (clearly marked
"Not Open To The Public") and will not be publicly
August2001
Office Treatment and Handling
of Materials Submitted Under
MPEP § 724.02
700-250
available until a determination has been made as to
whether or not the information is important to a reasonable
examiner in deciding whether to allow the
application to issue as a patent. After the application
has been published pursuant to 35 U.S.c. 122(b)(1),
copies of the submitted material should not be made
available to any member of the public requesting a
copy of the pending application file wrapper under 37
CFR 1.14(c)(2) so long as the application is pending.
If the application published pursuant to 35 U.S.c.
l22(b)(1) is abandoned and a petition to expunge was
not filed, the material will be available to the public
under 37 CPR 1.14(c) or (e).
(B) The examiner, or other appropriate Office
official who is responsible for considering the information,
will make a determination as to whether or
not any portion or all of the information submitted is
important to a reasonable examiner in deciding
whether to allow the application to issue as a patent.
(C) Ifany portion or all of the submitted information
is found important to a reasonable examiner in
deciding whether to allow the application to issue as a
patent, it will be cited in the next Office action, or
other appropriate Office communication and will
become a part of the file history, which upon issuance
of the application as a patent would become available
to the public.
(D) Ifany portion or all of the submitted information
is found not to be important to a reasonable
examiner in deciding whether to allow the application
to issue as a patent, the next Office action or other
appropriate Office communication will so indicate
without including the details of the submitted information.
(E) Ifany portion or all of the submitted information
is found not to be important to a reasonable
examiner in deciding whether to allow the application
to issue as a patent, that information will be resealed
in its envelope or container and retained pending the
possible filing of a petition to expunge the information.
(F) Pending the filing of the petition to expunge,
the sealed envelope or container should be clearly
marked "Not Open To The Public."
(G) Any petition to expunge the submitted information
or any portion thereof under 37 CFR 1.59(b)
will be treated in accordance with MPEP § 724.05.

724.04(b) Materials Submitted in Reissue
Applications Open to the Public
Under 37 CF'R t.U(b)
Any materials submitted under MPEP § 724.02 in a
reissue application open to the public under 37 CFR
1.11(b) will be treated in the following manner:
(A) The submitted information will be maintained
separate from the reissue application file and will not
be publicly available until a determination has been
made as to whether or not the information is important
to a reasonable examiner in deciding whether to
allow the application to issue as a patent.
(B) The examiner, or other appropriate Office
official who is responsible for considering the information,
will make a determination as to whether or
not any portion or all of the information submitted is
important to a reasonable examiner in deciding
whether to allow the application to issue as a patent.
(C) Ifany portion or all of the submitted information
is found important to a reasonable examiner in
deciding whether to allow the application to issue as a
patent, it will be cited in the next Office action or
other appropriate Office communication and will
thereafter become a permanent part of the reissue
application file and open to the public.
(D) Ifany portion or all of the submitted information
is found not to be important to a reasonable
examiner in deciding whether to allow the application
to issue as a patent, the next Office action or other
appropriate Office communication will so indicate
without including in the communication the details of
the submitted information.
(E) If any portion or all of the submitted information
is found not to be important to a reasonable
examiner in deciding whether to allow the application
to issue as a patent, that information will be resealed
in its envelope or container and retained separate from
the application file, and unavailable to the public,
pending the possible filing of a petition to expunge
the information.
(F) Pending the filing of the petition to expunge
the sealed envelope or container should be clearly
marked "Not Open To The Public."
(G) Any petition to expunge a portion or all of the
submitted information will be treated in accordance
with MPEP § 724.05.
EXAMINATION OF APPLICATIONS
724.04(c)
724.04(c) Materials Submitted in ReexaminationFile
. Open to the
Public Under 37 CFR l.1t(d)
Any materials submitted under MPEP § 724.02 in a
reexamination file open to the public under 37 CFR
1.11 (d) will be treated in the following manner:
(A) The submitted information will be maintained
separate from the reexamination file and will not be
publicly available until a determination has been
made as to whether or not the information is important
to a reasonable examiner in deciding whether or
not a claim is patentable.
(B) The examiner, or other appropriate Office
official who is responsible for considering the information,
will make a determination as to whether or
not any portion or all of the information submitted is
important to a reasonable examiner in deciding
whether or not a claim is patentable.
(C) Ifany portion or all of the submitted information
is found important to a reasonable examiner in
deciding whether or not a claim is patentable, it will
be citedin the next Office action or other appropriate
Office communication and will thereafter become a
permanent part of the reexamination file and open to
the public.
(D) If any portion or all of the submitted information
is found not to be important to a reasonable
examiner in deciding whether or not a claim is patentable,the
next Office action or other appropriate Office
communication will so indicate without including in
the communication the details of the submitted information.
(E) Ifany portion or all of the submitted information
is found not to. be important to a reasonable
examiner in deciding whether or not a claim is patentable,
that information will be resealed in its envelope
or container and retained separate from the reexamination
file, and unavailable to the public, pending the
possible filing of a petition to expunge the information.
(F) Pending the filing of the petition to expunge
the sealed envelope or container should be clearly
marked "Not Open To The Public."
(G) Any petition to expunge a portion or all of the
submitted information under 37 CFR 1.59(b) will be
treated in accordance with MPEP § 724.05.
700-251 August 2001

724.05 MANUAL OF PATENT EXAMINING PROCEDURE
724.05 Petition To Expunge
Information or Copy of Papers
in Application File
I. INFORMATION SUBMITTED UNDER
MPEP § 724.02
A petition under 37 CFR 1.59(b) to expunge information
submitted under MPEP § 724.02 will be entertained
only ifthe petition fee (37 CPR 1.17(h» is filed
and the information has been found not to be important
to a reasonable examiner in deciding on patentability.
If the information is found to be important to a
reasonable examiner in deciding on patentability, any
petition to expunge the information will be denied.
Any such petition to expunge information submitted
under MPEP § 724.02 should be submitted at the time
of filing the information under MPEP §724.02 and
directed to the Technology Center (TC) to which the
application is assigned. Such petition must contain:
(A) a clear identification ofthe information to be
expunged without disclosure of the details thereof;
(B) a clear statement .that the information to be
expunged is trade secret material, proprietary materiai,
and/or subject to a protective order, and that the
information has not been otherwise made public;
(C) a .commitment on the part of the petitioner to
retain such information for the period of any patent
with regard to which such informationis submitted;
(D) a statement that the petition to expunge is
being submitted by, or on behalf of, the party in interest
who originally submitted the information;
(E) the fee as set forth in 37 CFR 1.17(i) for a
petition under 37 CPR1.59(b).
Any such petition to expunge should accompany
the submission of the information and, in any event,
must be submitted in sufficient time that it can be
acted on prior to the date on which the patent or reexamination
. certificate issues or the application
becomes abandoned. The' files of abandoned published
applications are open to any member of the
public for physical inspection (subject to the same
conditions that apply to inspection of patented files).
Timely submission of the petition is, accordingly,
extremely important. If the petition does not accompany
the information when it is initially submitted, the
petition should be submitted while the application or
August2001
700-252
reexamination is pending in the Technology Center
(TC) and before it is transmitted to the Publishing
Division. If, for any reason, a decision to expunge
cannot be, or is not, made prior to the date on which
the patent or reexamination certificate issues or the
application becomes abandoned, any material then in
the file will remain therein and be open to the public
in accordance with 37 CFR 1.14. Accordingly, it is
important that both the submission of any material
under MPEP § 724.02 and the submission of any petition
to expunge occur as early as possible during the
examination process. The decision will beheld in
abeyance and be decided upon the close of prosecution
on the merits.
II. INFORl\1ATIONUNINTENTIONALLY
SUBMITTED IN APPLICATION
A petition to' expunge information unintentionally
submitted in an application (other than information
forming part of the original disclosure) may be filed
under 37 CPR 1.59(1:», provided that:
(A) the Office can effect such return prior to the
issuance of any patent on the application in issue;
(B) it is stated that the information submitted was
unintentionally submitted and the failure to obtain its
return would cause irreparable harm to the party who
submitted the information or to the party in interest on
whose behalf the information was submitted;
(C) the information has not otherwise been made
public;
(D) there is a commitment on the part ofthe petitioner
to retain such information for the period of any
patent with regard to which such information is submitted;
(E) it is established to the satisfaction of the
Commissioner that the informationto be returned is
not material information under 37 CPR 1.56; and
(F) the petition fee as set forth in 37 CFR 1.17(h)
is included.
A request to return information that has not been
clearly identified as information that maybe later subject
to such a request by marking and placement in a
separate sealed envelope or container shall be treated
on a case-by-case basis, Applicants should note
that unidentified information that is a trade secret,
proprietary, or subject to a protective order that is submitted
in an Information Disclosure Statement may

inadvertently be placed in an Office prior art search
file by the examiner due to the lack of such identification
and may not be retrievable.
III. INFORMATION SUBMITTED IN
INCORRECT APPLICATION
37 CFR 1.59(b) also covers the situation where an
unintended heading has been placedon papers so that
they are present in an incorrect application file. In
such a situation, a petition should request return of the
papers rather than transfer of the papers to the correct
application file. The grant of such a petition will be
governed by the factors enumerated in paragraph II of
this section in regard to the unintentional submission
of information. Where the Office can determine the
correct application file that the papers were actually
intended for, based on identifying information in the
heading of the papers (e.g., application number, filing
date, title of inventiou and inventor(s) name(s)), the
Office will transfer the papers to the correct application
file for which they were intended without the
need of a petition.
IV. INFORMATION FORMING PART OF
THE ORIGINAL DISCLOSURE
A petition to expunge a part of the original disclosure
must be filed under 37 CFR 1.183, since such a
request requires a waiver of the requirements· of
37 CPR 1.59(a). Petitions under 37 CPR U83
should be directed to the Office of Petitions. The petition
must explain why justice requires waiver of the
rules to permit the requested material to be expunged.
It should be noted that petitions to expunge information
which is a part of the original disclosure;.such as
the specification and drawings, will ordinarily not be
favorably entertained. The original disclosures of
applications are scanned for record keeping purposes.
Accordingly, the grant of a petition to expunge
information which is part of the original disclosure
would require that the USPTO record of theoriginally
filed application be changed, which may not be possible.
EXAMINATION OF APPLICATIONS
724.06
724.06 Handling of Petitions to Expunge
Information or Copy of Papers
in Application File
37 CFR 1.59. Expungement of information or copy of
papers in applicationfile.
(a)(l) Information in an application will not be expunged
andreturned-except as provided in paragraph (b) of this section.
See § 1.618 for.return of-unauthorized and-improper .papers in
interferences.
(2) Information forming part of the original disclosure
(i.e., written specification includingthe claims, drawings" and any
preliminary amendment specifically incorporated into an executed
oath or declaration undef§§ 1'-63and 1.175) will not be expunged
from the'application file.
(b) An applicant may request that the Office expunge and
return information, other than what is excluded by paragraph
(a)(2)of this section, by filing a petition under this paragraph.
Any petition to expunge.and return information fromen application
must include the fee set forth in § 1.17(h) and establish to the
satisfaction of the Commissioner that the return of the information
is appropriate.
*****
37 CFR 1.59 provides that information, other than
the original disclosure of the application, may be
expunged from the file wrapper provided a petition to
expunge under 37 CFR 1.59(b) and the required fee
set.forthin 37 CFR 1.17(h) are filed, and further that
petitioner has established to the satisfaction of the
Commissioner that the return of the information is
appropriate. Returnofinformation that was originally
submitted to the Office under MPEP § 724.02 .is
appropriate when the petitioner complies with items
(A)-(E) set forth in MPEP § 724.05, paragraph 1, and
the ex.aminer or otherappropriate Officeofficial who
is responsible for considering the information has
determined that the information is not important to a
reasonable examiner in deciding whether to allow the
application (i.e., the information is not material to patentability).
Return of information that was inadvertently
submitted to the Office is appropriate provided
that items(A)-(F).set forth in MPEP. § 724.05, paragraphII,
are satisfied, See also MPEP § 724.
Where the informationto be expunged was not submitted
pursuant to MPEP § 724.02 or as part of an
Information Disclosure Statement, the petition should
be sent to the Office of Petitions for decision,
The decision on the petition to expunge should be
held in abeyance until the application is allowed or an
Ex parte Quayle action, or a Notice of Abandonment
700-253 August'2001

Applicant is required to retain the expunged materia1(s) for the
life of any patent which issues on the above-identified application.
The expunged material is returned herewith.
Enclosure: [9]
Examiner Note:
1. A Technology Center Director decides this petition only if
the information was snbmitted pursuant to MPIjP § 724.02. Furthermore,
a petition. to expunge may not be granted unless the
application has been allowed or is abandoned, or an Ex Parte
Quayle action has been mailed.
2. The petition should be sent to the Office ofPetitions for decision
if:
(a) the information was not submitted pursuant to MPEP §
724.02. Information which is part ofthe original disclosure (specification
including any claims, drawings, and any preliminary
amendment referred to in the oath or declaration) cannot be
expunged under 37 CFR 1.59. Some papers entered into the
application file, e.g., arguments made in an amendment, may be
expunged under appropriate circumstance, however, the petition
should be sent to the Office of Petitions for decision; or
(b) the petition is also accompanied by a petition under 37 CFR
1.183 requesting waiver of one of the requirements explicitly set
forth in 37 CFR 1.59 (e.g., requesting expungement of part of the
original disclosure).
3. This decision is printed with the USPTO letterhead.
4. In brackets 7 and 9, clearly identify the expunged document.
For example, refer to the author and title of the document.
5. Mail with PfO-9OC cover sheet.
'ff 7.206 Petition Under 37 CFR i.59(b) To Expunge
Information Dismissed
In re Application of [2]
Appl. No.: [3]
Filed: [4]
For: [5]
: DECISION ON PETmON
: UNDER 37 CFR 1.59
EXAMINATION OF APPLICATIONS 724,06
Paper No. [1]
This is a decision on the petition under 37 CFR 1.59(b), filed
[6], to expunge information from the above identified application.
The petition is dismissed.
Petitioner requests that a document entitled [7], filed [8], be
expunged from the record.
"Materiality" is defined as any information which the examiner
considers as being important to a determination ofpatentability of
the claims.
The petition is deficient because:
Examiner Note:
1. A Technology Center Director decides this petition only if
the information was submitted pursuant to MPEP § 724.02. However,
the petition should not be granted until the application has
been allowed or abandoned, or an Ex parte Quayle action has
been mailed.
2. The petition should be sent to the Office ofPetitions for decision
if:

724.06 MANUALOF PATENT EXAMININGPROCEDURE
In bracket Ldndicate whether any such statement was provided
and, if S0, explain why such statement is not clear.
'f[ 7.212 Petition to Expunge, Conclusion, No Clear
Identification ofInformation to be Expunged,
the petition does not clearly identify the informationrequested
to be expunged.. [1]
Examiner Note:
In bracket 1, explain why the identification of the information
requestedto be expungedis not clear.
August 2001
700,256
'f[ 7213 Petition to Expunge, Conclusion, No Statement
That Petition Is Submitted By, or on Behalf of Party in
Interest Who Originally Submitted the Information
the petition does not contain a statement that the petition is
being submitted by, or on behalf of, the party in interest who originally
submitted the information.
•••••••••••••••••••••••••••••

Chapter 800 Restriction in Applications Filed Under 35 U.S.C.
111; Double Patenting
801
802
802.01
802.02
803
803.Gl
803.02
803.03
803.03(a)
803.Q4
804
804.Gl
804.Q2
804.03
806.01
806.02
806.03
806.04
806.04(a)
806.04(b)
806.04(c)
806.04(d)
806.04(e)
806.04(1)
806.05
806.05(a)
806.05(b)
806.05(c)
806.05(d)
806.05(e)
Introduction
Basis for Practice in Statute and Rules
Meaning of "Independent" and "Distinct"
Definition ofRestriction
Restriction - When Proper
Review by Examiner With at Least Partial
Signatory AUthority
Restriction - Markush Claims
Restriction - Transitional Applications
Transitional Application - Linking Claim
Allowable
803.03(b) Transitional Application - Generic Claim
804.04
80S
806
Allowable
Restriction - Nucleotide Sequences
Definition ofDouble Patenting
Prohibition of Double Patenting Rejections
Under 35 U.S.c. 121
Avoiding a Double Patenting Rejection
Treatment ofCommonly Owned Cases of
Different Inventive Entities
Submission to Technology Center Director
Effect ofImproper Joinder in Patent
Determination ofDistinctness or Independence
of Claimed Inventions
Compare Claimed Subject Matter
Patentability Over the Prior At! Not Considered
Single Embodiment, Claims Defining Same
Essential Features
Independent Inventions
Species - Genus
Species May Be Related Inventions
Subcombination Not Generic to Combination
Definition of a Generic Claim
Claims Restricted to Species
Claims Restricted to Species, by Mutually
Exclusive Characteristics
806.04(h) Species Must Be Patentably Distinct From
Each Other
806.04(i) Generic Claims Presented for First Time After
Issue of Species
Related Iuventious
Combiuation and Subcombiuation or Element
Old Combination - Novel Subcombination
Criteria ofDistinctuess for Combination,
Subcombination, or Element of a Combination
Subcombinations Usable Together
Process and Apparatus for Its Practice ­
Distinctness
806.05(1) Process of Making and Product Made ­
Distinctness
806.05(g)
806.05(h)
806.05(i)
807
808
808.Gl
808.01(a)
808.02
809
809.02
809.02(a)
809.02(b)
809.02(c)
809.02(d)
809.02(e)
809.Q3
809.04
810
810.01
810.02
810.03
811
811.02
811.03
811.Q4
812
812.01
814
81S
816
817
818
818.01
818.Q2
818.02(a)
818.02(b)
818.02(c)
818.Q3
818.03(a)
818.03(b)
Apparatus and Product Made - Distinctness
Product and Process ofUsing
Product, Process ofMaking, and Process of
Using - product Claim Not Allowable
Patentability Report Practice Has No Effect on
Restriction Practice
Reasons for Insisting Upon Restriction
Independent Inventions
Species
Related Inventions
Claims Linking Distinct Inventions
Generic Claim Linking Species
Election Required
Election Required - Generic Claim Allowable
Action Following Election
No Species Claims
Generic Claim Allowable in Substance
Linking Claims
Retentiou of Claims to Nonelected Inveution
Action on the Merits
Not Objectionable When Coupled With
Requirement
Usually Deferred
Given on Elected Invention When Requirement
Is Made Final
Time for Making Requirement
Even After Compliance With Preceding
R.equirement
Repeating After Withdrawal Proper
Proper Even Though Grouped Together in
Parent Application
Who Should Make the Requirement
Telephone Restriction Practice
Indicate Exactly How Application Is To
Be Restricted
Make Requirement Complete
Give Reasons for Holding of Independence
or Distmctness
Outline ofLetter for Restriction Requirement
Between Distinct Inventions
Election and Reply
Election Fixed by Action on Claims
Election Other Than Express
By Originally Presented Claims
Generic Claims Only - No Election
of Species
By Optional Cancellation ofClaims
Express Election and Traverse
Reply Must Be Complete
Must Elect, Even When Requirement
Is Traversed
818.03(c) Must Traverse To Preserve Rightof Petition
800-1 August 2001

803.03 MANUAL OF PATENT EXAMINING PROCEDURE
(ii) Confirm an election made prior to the notice and
pay the fee set forth in § 1.17(s) for each independent and distinct
invention claimed in the application in addition to the one invention
which applicant previously elected; or
(iii) File a petition under this section traversing the
requirement. If the required petition is filed in a timely manner,
the original time period for electing and paying the fee set forth in
§ 1.17(5) will be deferred and any decision on the petition affirming
or.modifying the requirement will 'set' a new time period to
elect the invention or inventions to be searched and examined and
to pay the fee set forth in § 1.17(8) for each independent and distinct
invention claimed in the application in excess of one which
applicant elects.
(3) The additional inventions for which the required fee
has not been paid will be withdrawn from consideration under
§ 1.142(b). An applicant who desires examination of an invention
so withdrawn from consideration can file a divisional application
under 35 U.S.C. 121.
(c) The provisions of this section shall not be applicable to
any application filed after June 8, 1995.
"Restriction" under 37 CFR I.I29(b) applies to
both restriction requirements under 37 CFR 1.142 and
election of species requirements under 37 CFR 1.146.
37 CFR I.I29(b)(I) provides for examination of
more than one independent and distinct invention in
certain applications pending for 3 years or longer as
of June 8, 1995, taking into account any reference to
any earlier application under 35 U.S.C. 120, 121, or
365(c). Applicant will not be permitted to have such
additional invention(s) examined in an application if:
(A) the requirement was made in the application
or in an earlier application relied on under 35 U.S.C.
120, 121, or 365(c) prior to April 8, 1995;
(B) no restriction requirement was made with
respect to the invention(s) in the application or earlier
application prior to April 8, 1995, due to actions by
the applicant; or
(C) the required fee for examination of each additional
invention was not paid.
Only if one of these exceptions applies is a normal
restriction requirement appropriate and telephone
restriction practice may be used.
Examples of what constitute "actions by the applicant"
in 37 CFR I.I29(b)(I) are:
(A) applicant abandoned the application and continued
to refile the application such that no Office
action could be issued in the application,
August 2001
800-6
(B) applicant requested suspension of prosecution
under 37 CFR I.I03(a) such that no Office action
could be issued in the application,
(C) applicant disclosed a plurality of independent
and distinct inventions in the present or parent application,
but delayed presenting claims to more than
one of the disclosed independent and distinct inventions
in the present or parent application such that no
restriction requirement could be made prior to April 8,
1995,and
(D) applicant combined several applications, each
of which claimed a different independent and distinct
invention, into one large "continuing" application, but
delayed filing the continuing application first claiming
more than one independent and distinct invention
such that no restriction requirement could be made
prior to April 8, 1995.
In examples (A) and (B), the fact that the present or
parent application claiming independent and distinct
inventions was on an examiner's docket for at least 3
months prior to abandonment or suspension, or in
examples (C) and (D), the fact that the amendment
claiming independent and distinct inventions was first
filed, or the continuing application first claiming the
additional independent and distinct inventions was on
an examiner's docket, at least 3 months prior to April
8, 1995, is prima facie evidence that applicant's
actions did not prevent the Office from making a
requirement for restriction with respect to those independent
and distinct inventions prior to April 8, 1995.
Furthermore, an extension of time under 37 CFR
1.136(a) does not constitute such "actions by the
applicant" under 37 CFR I.I29(b)(I).
NOTE: If an examiner believes an application falls
under the exception that no restriction could be made
prior to April 8, 1995, due to applicant's action, the
application must be brought to the attention of the
Technology Center (TC) Special Program Examiner
for review.
Under 37 CFR I.I29(b)(2), if the application contains
claims to more than one independent and distinct
invention, and no requirement for restriction or for the
filing of divisional applications can be made or maintained,
applicant will be notified and given a time
period to:

RESTRICTION IN APPLICATION FILED UNDER35 U.S.C. Ill; DOUBLE PATENTING 803.03(b)
(A) elect the .invention or inventions to be
searched and examined, if no election has been made
prior to the notice, and pay the fee set forth in 37 CFR
1.17(s) for each independent and distinct invention
claimed in the application in excess of one which
applicant elects,
(B) in situations where an election was made in
reply to a requirement for restriction that cannot be
maintained, confirm the election made prior to the
notice and pay the fee set forth in 37 CPR 1.17(s) for
each independent and distinct invention claimed in
the application in addition to the one invention which
applicant previously elected, or
(C) file a petition under 37 CFR 1.129(b)(2) traversing
the requirement without regard to whether the
requirement has been made final. No petition fee is
required.
37 CFR 1.129(b)(2) also provides that if the petition
is filed in a timely manner, the original time
period for electing and paying the fee set forth in
37 CFR 1.17(s) will be deferred and any decision on
the petition affirming or modifying the requirement
will set a new time period to elect the invention or
inventions to be searched and examined and to pay
the fee set forth in 37 CPR 1.17(s) for each independent
and distinct invention claimed in the application
in excess of one which applicant elects.
Under 37 CPR 1.129(b)(3), each additional invention
for which the required fee set forth in 37 CFR
1.17(s) has not been paid will be withdrawn from consideration
under 37 CFR 1.142(b). An applicant who
desires examination of an invention so withdrawn
from consideration can file a divisional application
under 35 U.S.C. 121.
37 CPR 1.129(c) clarifies that the provisions of
37 CFR 1.129(a) and (b) are not applicable to any
application filed after June 8, 1995. However, any
application filed on June 8, 1995, would be subject to
a 20-year patent term.
Form paragraph 8.41 may be used to notify applicant
that the application is a transitional application
and is entitled to consideration of additional inventions
upon payment of the required fee.
'f[ 8.41 Transitional Restriction or Election of Species
Requirement To Be Mailed After June 8, 1995
This application is subject to the transitional restriction provisions
of Public Law 103-465, which became effective on June 8,
1995, because:
1, theapplication was filed on or before June 8; 19951 and
has,an effective U.S.filing, date of June 8,1992, or earlier;
2. a requirement for restriction was not made in the present
or a parent application prior to April 8, 1995; and
3. the examiner was not prevented from making a requirement
for restriction in the present or a parent application. prior to
April 8, 1995, due to actions by the applicant.
The transitional restriction provisions permit applicant to have
more than one independent and distinct invention examined in the
same application by paying a fee for each invention in excess of
one.
Final rules concerning the transition restriction provisions were
pnblished in the Federal Registerat 60 FR 20195 (April 25, 1995)
and in the Officiai Gazette at 1174 O.G. 15 (May 2, 1995). The
final rules at 37 CPR 1.17(s) include the fee amount required to be
paid for each additional invention as set forth in the following
requirement for restriction. See the current fee schedule for the
proper amount of the fee.
Applicant must either: (1) elect the invention or inventions to
be searched and examined and pay the fee set forth in 37 CPR
1.17(s) for each independent and distinct invention in excess of
one which applicant elects; or (2) file a petition under 37 CPR
1.129(b) traversing the requirement.
Examiner Note:
1. This form paragraph should be used in all restriction or election
of species requirements made in applications subject to the
transition restriction provisions set forth in 37 CPR 1.129(b)
where the requirement is being mailed after June 8, 1995. The
procedure is NOT applicable to any design or reissue application.
S03.03(a) Transitional Application
Linking Claim Allowable
Whenever divided inventions in a transitional
application are rejoined because a linking claim is
allowed (MPEP § 809) and applicant paid the fee set
forth in 37 CFR 1.17(s) for the additional invention,
applicant should be notified that he or she may
request a refund of the fee paid for that additional
invention.
S03.03(b) Transitional Application
Generic Claim Allowable
Whenever claims drawn to an additional species in
a transitional application for which applicant paid the
fee set forth in 37 CFR 1.17(s) are no longer withdrawn
from consideration because they are fully
embraced by an allowed generic claim, applicant
should be notified that he or she may request a refund
of the fee paid for that additional species.
800-7 August2001

803.03(b) MANUALOF PATENT EXAMINING PROCEDURE
The determination of when claims to a
nonelected species would no longer be withdrawn
August 2001 800-8
from consideration should be made as indicated in
MPEP § 809.02(b), § 809.02(c), or § 809.02(d).

803.04 MANUAL OF PATENT EXAMINING PROCEDURE
803.04
By statute, "[i]f two or more independent and dis"
tinct inventions are claimed in one application, the
Commissioner may require the application to be
restricted to one of the inventions." 35 U.S.C. 121.
Pursuant to this statute, the rules provide that "[i]f two
or more independent and distinct inventions are
claimed in a single application, the examiner in his
action shall require the applicant. . . to elect that
invention to which his claim shall be restricted."
37 CFR 1.142(a). See also 37 CFR 1.141(a).
Nucleotide sequences encoding different proteins
are structurally distinct chemical compounds and are
unrelated to one another. These sequences are thus
deemed to normally constitute independent and distinct
inventions within the meaning of 35 U.S.c. 121.
Absent evidence to the contrary, each such nucleotide
sequence is presumed to represent an independent and
distinct invention, subject to a restriction requirement
pursuant to 35 U.S.C. 121 and 37 CPR 1.141 et seq.
Nevertheless, to further aid the biotechnology industry
in protecting its intellectual property without creating
an undue burden on the Office, the
Commissioner has decided sua sponte to partially
waive the requirements of 37 CPR 1.141 et seq. and
permit a reasonable number of such .nucleotide
sequences to be claimed in a single application. See
Examination of Patent Applications Containing
Nucleotide Sequences, 1192 O.G 68 (November 19,
1996).
It has been determined that normally ten sequences
constitute a reasonable number for examination purposes.
Accordingly, in most cases, up to ten independent
and distinct nucleotide sequences will be
examined in a single application without restriction.
In addition to the specifically selected sequences,
those sequences which are patentably indistinct from
the selected sequences will also be examined. Furthermore,
nucleotide sequences encoding the same protein
are not considered to be independent and distinct
inventions and will continue to be examined together.
In some exceptional cases, the complex nature of
the claimed material, for example a protein amino
acid sequence reciting three dimensional folds, may
necessitate that the reasonable number of sequences to
be selected be less than ten. In other cases, applicants
August 2001
Restriction - Nucleotide
Sequences
800-10
may petition pursuant to 37 CFR 1.181 for examination
of additional nucleotide sequences by providing
evidence that the different nucleotide sequences do
not cover independent and distinct inventions.
See MPEP § 1850 for treatment of claims containing
independent and distinct nucleotide sequences in
international applications filed under the Patent Cooperation
Treaty (PCT) and national stage applications
filed under 35 U.S.C. 371.
EXAMPLES OF NUCLEOTIDE SEQUENCE
CLAIMS
Examples of typical nucleotide sequence claims
impacted by the partial waiver of 37 CFR 1.141 et
seq. (and the partial waiver of 37 CFR 1.475 and
1.499 et seq., see MPEP § 1850) include:
(A) an isolated and purified DNA fragment comprising
DNA having at least 95% identity to a DNA
sequence selected from SEQ ill Nos. 1-1,000;
(B) a combination of DNA fragments comprising
SEQID Nos. 1-1,000; and
(C) a combination of DNA fragments, said combination
containing at least thirty different DNA fragments
selected from SEQ ID Nos. 1-1,000.
Applications claiming more than ten individual
independent and distinct nucleotide sequences in
alternative form, such as set forth in example (A), will
be subject to a restriction requirement. Only the ten
nucleotide sequences selected in response to the
restriction requirement and any other claimed
sequences which are patentably indistinct therefrom
will be examined.
Applications claiming only a combination of nucleotide
sequences, such as set forth in example (B), will
generally not be subject to a restriction requirement.
The presence of one novel and nonobvious sequence
within the combination will render the entire combination
allowable. The combination will be searched
until one nucleotide sequence is found to be allowable.
The order of searching will be chosen by the
examiner to maximize the identification of an allowable
sequence. If no individual nucleotide sequence is
found to be allowable, the examiner will consider
whether the combination of sequences taken as a
whole renders the claim allowable.
Applications containing only composition
claims reciting different combinations of individual

804 MANUAL OF PATENT EXAMINING PROCEDURE
Schneller, 397 F.2d 350, 158USPQ 210 (CCPA
1968).
Refer ..to Charts I-A, I-B, II-A, II-B, III-A, and III­
B for an overview of the treatment of .applications
August2001 800-12
having conflicting claims (e.g., where a claim in an
application is not patentably distinct from a claim in a
patent or another application).

RESTRICTION IN APPLICATION FILED UNDER 35 U.S.C. I I 1; DOUBLE PATENTING
CONFLICTIN'Q CLA"(MS jlETWEEN:
. TWO APPLICATIONS *
:: SAME INVENTION
• Common I
At J,t One
:signee or
Same
Common Inventor,
venter Inventive
No Common
ASSigre Etity No
As;
In
I And And
.
CHART I-A
Commonlv Assisned-.
Different Inventive Entities
Provisional
Statutory .
Double-Patenting
Rejection
8.30 & 8.32
Provisional
Rejectionof later
applicationunder
102(e)
Rejection
Under
102(1) or
102(g)
.
7.15.01
7.15,7.19
I
Suggest
Claims
for
Or .. I
LetSenior Party Issue or
publish (if published.go to
Chart IIIMA) and RejectJunior
Provisional Statutory
Double-Patenting
Rejection
Interference
23,04
.
.'
Party Under l02(e)
•• 7.15.03 .
8.30 & 8.32
.
And/Or And And
.
Rejection Assignee Provisional Statutory Provisional Rejection of Later
Under
102(1) or
102(g)
Requiredto
Name Prior
Inventor
..
Double-Patenting
Rejection
8.30 &8.32 .'
'.
Application Under 102(e)
7.15.01
7.15,7.19 8.27 ! •
* This chart applies where the application being applied as a reference has NOT been published.
I
804
800-13 August 2001

804 MANUAL OF PATENT EXAMINING PROCEDURE
I Common
:signee or
venter
.
DIFFERENT INVENTIONS
.
(NOl Palenlably Dislinct)
At least One
Common Inventor,
No Common
Assignee
I
Same
Inventive
ti ty Er
I And And
Provisional
Obviousness ..
Double-Patenting
Provisional
Rejection Rejection of Later Rejection Under
Application Under
102(f)/103(.)
R.11 & R.'\:10r R.:n 102(e)1I03(.) or 102(g)/103(.)
. 7.21.01 7.21
.0
CHARTI-B
Currently
C'nmmn';'v Owned,
Different Inventive Entities
LeI Senior Party Issue or
Provisional Obviousness
Publish (if published. go to Double-Patenting
Chan III-B) and Reject Junior
Party Under 102Ce)/!03Ca)
Rejection
.
7.21
8.33 & 8.35 or 8.37
Commonly Owned at Time
I And I of Applicant's Invention
Provisional Provisional Rejection of Later
Obviousness Application Under lO2(e)/103(a)
Double-Patenting (for applications filed prior to
Rejection Nov. 29. 1999) ..
8.33 & 8.35 or 8.37 7.21.01
No showing orCommon Ownership at Time of Applicant's Invention
And/Or I And I And I
Rejection Assignee Required to Provisional Provisional
Under Either: Obviousness Rejection of Later
102(f)1I03(.) (al Name First Inventor of conflictinf
Subject Matter Under 102(f) or (g
Double-Patenting Application Under
or 0' Rejection 102(e)/103(.)
102(g)/103(.)
7.21
(b) Show Inventions Were Commonly
Owned at Time of Applicant's
Invention 8.33 & 8.35 or 8.37 7.21.01
8.28
* This chart applies where the application being applied as a reference has NOT been published.
August 2001 800-14

804 MANUAL OF PATENT EXAMINING PROCEDURE
CONFLICTING CLAIMS BETWEEN:
I Al'PLICATION AND A PATENT
--
DIFFERENT INVENTIONS
(Nol Palen"'bly OiSlinol)
)·Common , At least One Same
isignee or
Common Inventor, Inventive
vemor-
No Common Eftity Assignee
I
I And And
Obviousness
Double-Patenting
Rejection
Rejection
fc:n &. R.14 or R3fi Under
102(e)/103(.) •
I
Rejection Under
102(e)/103(a) *
7.21
7.21.02
Rejection Under
102(f)/103(.)
or 102(g)/103(.)
CHARTII-B
Currently
rnmmnnlv Own..a-
7.21
Different Inventive Entities
Obviousness
Double-Patenting
Rejection
8.33 & 8.34 or 8.36
Commonly Owned at Time
I And I of Applicant's Invention
Obviousness Rejection
Double-Patenting Under l02(e)/103(a) *
Rejection (for applications filed prior to
Nov. 29. 1999)
8.33 & 8.34 or8.36 7.21.02
No showing of Common Ownership at TIme of Applicant's Invention
And/Or I And I And I
Rejection Assignee Required to Either: Obviousness Rejection Under
(a) Name First lnventor oFConflictinf
Under
Subject Matter Under 102(f) or (g
Double-Patenting 102(e)/103(.) •
102(f)/103(.) 0' Rejection
(b) Show Inventions Were Commonly
0'
Owned al Time of Applicant's Invention
7.21.02
102(g)1l03(.) 8.33 & 8.34 or 8.36
8.28
7.21
*The reference patent would NOT tie prior artunder 3S U.S.C. 102(e) where the patentissued from an international application and the application
being examined was filed on or after Nov. 29. 2000 or filed prior 10 Nov. 29, 2000 and voluntarily published.
August 2001 800-16

804 MANUAL OF PATENT EXAMINING PROCEDURE
,..
CONFLICTI1"IG CLAIMSBETWEEN:
APPLICATIONAND A PUBLISHED
APPLICATION
CHARTIII·B
. DIfFERENT INVENTIONS Currently Commonly Owned
(Not Pateritably Distinct) Uillereni J.DventlveEDtllles
N. :OInmon
Ass!, gnee or
ntor
Atleast One
Common Inventor,
No Common
Same
Inventive
Entity
.
Assignee
I
I
I And And
Provisional
Obviousness Double-
Patenting Rejection
8.33 & 8.35 or 8.37
Rejection Under
102(e)/103(a) •
. .
Rejection Under
102(1)/103 or
7.21.02 102(g)/103
7.21
I
Rejection Under Provisional Obviousness
102(e)/103(a) • Double-Pateming Rejection
7.21
8.33 & 8.35 or 8.37
Conunonly Owned at Time
I I or Applicant s Invention
Provisional
ObviousnessDouble-
And
Rejection Under I02(e)/103(a) '"
(for applications filed prior to
PatentingRejection Nov. 29, 1999)
8.33 & 8.35 or 8.37
7.21.02
No showiot!' of Common Ownership at Time of Applicant's Invention
And/Or And And
.
.
Rejection Under Assignee Required to Either: Provisional Obviousness
102(1)1103(.)or (a) NameFirst Inventor of Conflicting Double-Patenting Rejection Under
102(g)/103(.) Subject Mauer Under102(f) or(g); or Rejection 102(e)/103 *
7.21
(b) ShowInventions WereCommonly
Ownedat Timeof Applicant's Invention
8.28
8.33 & 8.35 or 8.37 7.21.02
• Apply 3SU.S.c. 102(e)/I03(a) rejection if the application being examined-was filed on or' after Nov. 29, 2000 or filed prior
to Nov. 29.1000 and voluntarilypublished, otherwise; apply rejection under 35 U.S.C.,102(a)/103(a) or I02(b)1103(a), where
appropriate and make a "provisional" rejection of the later application under 35 U.S.C. I02(e)1103(a) using form Paragraph
z.zt.or.
August 2001 800-18
.

RESTRICTION IN APPLICATION FILED UNDER 35U.S.c. 111; DOUBLE PATENTING
I. INSTANCES WHERE DOUBLE PATENT­
ING ISSUE CAN BERAISED
A double patenting issue may arise between two or
more pending applications, between one or more
pending applications and a patent, or, between one or
more pending applications and a published application.
A double patentingissue may likewise arise ina
reexamination proceeding between the patent claims
being reexamined and the, claims of one or more
applications and/or patents. Double patenting does not
relate to international applications which have not yet
entered the national stage in the United States.
A. Between Issued Patent and One or More
Applications
Double patenting may exist between an issued
patent and an application filed by the same inventive
entity, or by an inventive entity having a common
inventor with the patent, and/or by the owner of the
patent. Since the inventor/patent owner has already
secured the issuance of a first patent, the examiner
must determine whether the grant of a second patent
would give rise to an unjustified extension of the
rights granted in the first patent.
B. Between Copending Applications-s-Provisional
Rejections
Occasionally, the examiner becomes aware of two
copending applications filed by the same inventive
entity, or by different inventive entities having a common
inventor, and/or by a common, assignee that
would raise an issue of double patenting if one of the
applications became a patent. Where this issue can be
addressed without violating the confidential status of
applications (35 U.S.c. 122), the courts have sanctioned
the practice of making applicant aware of the
potentialdouble patenting problem ifone ofthe applications
became a patent by permitting the examiner to
make a "provisional" rejection on the ground of double
patenting. In re Mott, 539f.2d 1291, 190 USPQ
536 (CCPA 1976); .In re Wetterau, 356 E2d 556, 148
USPQ 499 (CCPA 1966). The merits of such a provisional
rejection can be addressed by both the applicant
and the examiner without waiting for the first
patent to-issue.
The "provisional" double patenting rejection
should continue to be made by the examiner in each
804
application as long as there are conflicting claims in
more than one application unless that "provisional"
double patenting rejection is the only rejection
remaining in one of the applications. If the "provisional"
double patenting rejection in one application
is the only rejection remaining in that application, the
examiner should then withdraw that rejection and permit
the application to issue asa patent, thereby converting
the "provisional" double patenting rejection in
the other application(s) into a double patenting rejection
at the time the one application issues as a patent.
If the "provisional" double patenting rejections in
both applications are the only rejections remaining in
those applications, the examiner should then withdraw
that rejection in one of the applications (e.g., the
application with the earlier filing date) and permit the
application to issue as a patent. The examiner should
maintain the double patenting rejection in the other
application as a "provisional" double patenting rejection
which will be converted into a double patenting
rejection when the one application issues as a patent.
C. Between, One or More Applications and a
Published Application. ProvisionalRejections
Double patenting may exist between a published
patent application and an application filed by the
same inventive entity, or by different inventive entities
having a common inventor, and/or by a common
assignee. Since the published application has not yet
issued as a patent, the examiner is permitted to make a
"provisional'; rejection on the ground of double patenting.
See the discussion regarding "provisional"
double patenting rejection in subsection B. above.
D. Reexamination Proceedings
A double patenting issue may raise a substantial
new question .of patentability ofa claim of a patent,
and thus be addressed in a reexamination proceeding.
In re Lonardo, 119 E3d 960, 91515, 43 USPQ2d 1262,
1266 (Fed. Cir. 1997) (In giving the Commissioner
authority under 35 U.S.C. 303(a) in determining the
presence of a substantial new question of patentability,
"Congress intended that the phrases 'patents and
publications' and 'other patents or publications' in
section 303(a) not be limited to prior art patents or
printed publications." (emphasis added». Accordingly,
if the .issue of double patenting was not
800-19 August 2001

RESTRICTION IN APPLICATION FILED UNDER 35 U.S.c. Ill; DOUBLE PATENTING 804
If it is determined that the same invention is being
claimed twice, 35 U.S.c. 101 precludes the grant of
the second patent regardless of the presence or
absence of a terminal disclaimer. Id.
Form paragraphs 8.30 and 8.31 (between an issued
patent and one or more applications) or 8.32 (provisional
rejectious) may be used to make statutory double
patenting rejections.
'f[ 8.3035 U.S.c. 101, Statutory Basisfor Double Patenting
"Heading" Only
A rejection- based on double patenting of the "same invention"
type finds its support in the language of 35 U.S.C.101 which
states that "whoever invents or discovers any new and useful precess...
may obtain g patent therefor..." (Emphasis added). Thus,
the term "same invention," in this context, means an invention
drawn to identical subject matter. See Miller v. Eagle Mfg. Co.;
151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619
(CCPA 1970); and In re Ockert. 245 F.2d 467, 114 USPQ 330
(CCPA 1957).
A statutory type (35 U.S.c. 101) double patenting rejection can
be-overcome -by canceling_or amending the conflicting, claims so
they are, no longer coextensive in scope. The:filing of a terminal
disclaimer cannot _overcome a double patenting _rejection based
upon 35U.S.C. 101.
Examiner Note:
The above form paragraph must be used as .a heading for all
subsequent double patenting rejections of 'the statutory (same
invention) type using either of form paragraphs 8.31.or 8.32;
'f[ 8.31 Rejection, 35 U.S.c. 101, Double Patenting
Claim [1] rejected under 35 U.S.C. 101 as claiming the same
invention as that of claim [2] ofprior U.S. Patent No. [3]. This is a
double patenting rejection.
Examiner Note:
L This paragraph must be preceded by form paragraph 8.30
and is used only for double patenting rejections of the.same invention
claimed in an earlier patent; that is, the "scope" ofthe inventions
claimed is identical.
2. If the conflicting claims are in another _copending application,
do not use this paragraph. _A provisional double patenting
rejection should be made using paragraph 8.32:
3. Do not use this paragraph for-non-statutory-type double patenting
rejections. Ifnon-statutory type, use appropriate form paragraphs
8.33 to 8.39.
4. This paragraphmay be used where.the conflicting patent and
the pending application are:
(a) by the same inventive entity, or
(b) by a different inventive entity and are commonly assigned
even though there is no common inventor, or
(c) not commonly assigned buthave at least one common inventor.
5. In bracket 3, insert the number of the conflicting patent.
6. If the patent is to 'a different' inventive entity" and is commonly
assigned with the application, paragraph 8.27 should additionally
be used to require the assignee to name the first inventor.
7. 'Ifevidence is of record to indicate that the patent is prior art
under either 35 U.S.C. 102(1) or (g), a rejection should also be
made using paragraphs 7.15 and/or 7.19 in addition to this double
patenting rejection.
8. ,If ti1epatent is to a different inventive entity from the application
and the effective U.S. filing date of the patent antedates the
effective filing date of the application, a rejection under 35 U.S.C.
102(e) should additionally be made using form paragraph 7.15.02.
'f[ 8.32 Provisional Rejection, 35 U.S.c. 101, Double
Patenting
Claim.[1] provisionally rejected under 35 U.S.C. 101as claim-.
ingthe same invention as that of claim [2] of ccpending ApplicationNo.
'[3]. Thisis.a provisional double patenting rejection since
the conflicting claims have not in fact been patented.
Examiner Note:
1. This paragraph must be preceded by form paragraph 8.30
and is used only for double patenting rejections of the same invention
claimed in another copending application; that is, the scope of
the claimed inventions is identical.
2. Ifthe conflicting claims are from an issued patent, do not use
this paragraph. See paragraph 8.31.
3. Do not use this paragraph for non-statutory-type double patenting
rejections. See paragraphs 8.33 to 8.39.
4. This paragraph may be used where the conflicting claims are,
in a copending application that is:
(a) bythe same inventive entity, or
(b) bya different inventive entity and is cOmmonly assigned
even though there is no commoninventor, or .
(c) not commonly assigned but has at least one common inventor.
5. Paragraph 8.28 may be used in place of or along with this
paragraph to resolve any remaining issues, relating to priority
under 35 U.S.C,J02(1) or (g).
6. In bracket 3"insert the number of the,conflicting application.
7. A provisional double patenting rejection should also be made
in the conflicting application.
8. Ifthe copending application is by a different-inventive entity
and is commonly assigned, paragraph 8.27 should additionally be
used to require the assignee to name the first inventor.
9. . If evidenceisalsoof record to show that-either application is
prior art unto the other under 35 U.S.C. 102(1) or (g), a rejection
should also, be, made in the other application using ,paragraphs
7.15 and/or 7.19 in addition to this provisional double patenting
rejection.
10. If-the applications do not have the same inventive entity and
effective U.S. filing date, a provisional102(e) rejection should
additionally be made in the later-filed application using paragraph
7.15.01.
If the "same invention" is not being claimed twice,
an analysis must be made to determine whether a nonstatutory
basis for double patenting exists.
800-21 August 2001

804 MANUAL OF PATENT EXAMINING PROCEDURE
B. Nonstatutory Double Patenting
A rejection based on nonstatutory double pateuting
is based on a judicially created doctrine grounded in
public policy so as to prevent the unjustified or
improper timewise extension of the right to exclude
granted by a patent. In re Goodman, 11 F.3d 1046,
29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759
F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van
Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982);
In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA
1970); In re Thorington, 418 F.2d 528, 163 USPQ 644
(CCPA 1969); In re White, 405 F.2d 904, 160 USPQ
417 (CCPA 1969); In re Schneller, 397 F.2d 350, 158
USPQ 210 (CCPA 1968); In re Sarett, 327 F.2d 1005,
140 USPQ 474 (CCPA 1964).
1. Obviousness-Type
In determining whether a nonstatutory basis exists
for a double patenting rejection, the first question to
be asked is - does any claim in the application define
an invention that is merely an obvious variation of an
invention claimed in the patent? If the answer is yes,
then an "obviousness-type" nonstatutory double patenting
rejection may be appropriate. Obviousnesstype
double patenting requires rejection of an application
claim when the claimed subject matter is not patentably
distinct from the subject matter claimed in a
commonly owned patent when the issuance of a second
patent would provide unjustified extension of the
term of the right to exclude granted by a patent. See
Eli Lilly & Co. v.Barr Labs., Inc., 251 F.3d 955, 58
USPQ2d 1865 (Fed. Cir. 2001); Ex parte Davis, 56
USPQ2d 1434, 1435-36 (Bd.Pat. App. & Inter.
2000).
A double patenting rejection of the obviousnesstype
is "analogous to [a failure to meet] the nonobviousness
requirement of 35 U.S.c. 103" except that
the patentprincipally underlying the double patenting
rejection is not considered prior art. In re Braithwaite,
379. F.2d 594, 154 USPQ 29 (CCPA 1967). Therefore,
any analysis employed in an obviousness-type double
patenting rejection parallels the guidelines foranalysis
of a 35 U.S.C. 103 obviousness determination. In
re Braat, 937 F.2d 589, 19 USPQ2d 1289 (Fed. Cir.
1991); In re Longi, 759 F.2d 887, 225 USPQ 645
(Fed. Cir. 1985).
Since the.analysis employed in an obvionsness-type
double patenting determination parallels the guide-
August 2001 800-22
lines for a 35 U.S.C. 103(a) rejection, the factual
inquiries set forth in Graham v. John Deere Co., 383
U.S. 1, 148 USPQ 459 (1966), that are applied for
establishing a background for determining obviousness
under 35 U.S.c. 103 are employed when making
an obvious-type double patenting analysis. These factual
inquiries are summarized as follows:
(A) Determine the scope and content of a patent
claim and the prior art relative to a claim in the applicationat
issue;
(B) Determine the differences between the scope
and content of the patent claim and the prior art as
determined in (A) and the claim in the application at
issue;
(C) Determine the level of ordinary skill in the
pertinent art; and
(D) Evaluate any objective indicia of nonobviousness.
The conclusion of obviousness-type double patenting
is made in light of these factual determinations.
Any obviousness-type double patenting rejection
should make clear:
(A) The differences between the inventions
defined by the conflicting claims - a claim in the
patent compared to a claim in the application; and
(B) The reasons why a person of ordinary skill in
the art would conclude that the invention defined in
the claim in issue is an obvious variation of the invention
defined in a claim in the patent.
When considering whether the invention defined in
a claim of an application is an obvious variation of the
invention defined in the claim of a patent, the disclosure
of the patent may not be used as prior art. This
does not mean that one is precluded from all use of
the patent disclosure.
The specification can always be used as a dictionary
to learn the meaning of a term in the patent
claim. In re Boylan, 392 F.2d 1017, 157 USPQ 370
(CCPA 1968). Further, those portions of the specification
which provide support for the patent claims
may also be examined and considered when addressing
the issue of whether a claim in the application
defines an obvious variation of an invention claimed
in the patent. In re Vogel, 422 F.2d 438, 441-42,
164 USPQ 619,622 (CCPA 1970). The court in Vogel
recognized "that it is most difficult, if not meaning-

804 MANUAL OF PATENT EXAMINING PROCEDURE
Although a delay in the processing of applications
before the Office that would cause patents to issue in
an order different from the order in which the applications
were filed is a factor to be considered in determining
whether a one-way or two-way obviousness
determination is necessary to support a double patenting
rejection, it may be very difficult to assess
whether an applicant or the administrative process is
primarily responsible for a delay in the issuance of a
patent. On the one hand, it is applicant who presents
claims for examination and pays the issue fee. On the
other hand, the resolution of legitimate differences of
opinion that must be resolved in an appeal process or
the time spent in an interference proceeding can significantly
delay the issuance of a patent. Nevertheless,
the reasons for the delay in issuing a patent have been
considered in assessing the propriety of a donble patenting
rejection. Thus, in Pierce v. Allen B. DuMont
Laboratories, Inc., 297 F.2d 323, 131 USPQ 340 (3d.
Cir. 1961), the court found that administrative delay
may justify the extension of patent rights beyond
17 years but "a considered election to postpone acquisitionof
the broader [patent after the issuance of the
later filed application] should not be tolerated." In
Pierce, the patentee elected to participate in an interference
proceeding [after all claims in the application
had been determined to be patentable] whereby the
issuance of the broader patent was delayed by more
than 7 years after the issuance of the narrower patent.
The court determined that the second issued patent
was invalid on the ground of double patenting. Similarly,
in In re Emert, 124 F.3d 1458,44 USPQ2d 1149
(Fed. Cir. 1997), the court found that the one-way test
is appropriate where applicants, rather than the Office,
had significant control over the rate of prosecution of
the application at issue. In support of its finding that
the applicants were responsible for delaying prosecution
of the application during the critical period, the
court noted that the applicants had requested and
received numerous time extensions in various filings.
More importantly, the court noted, after initially
receiving an obviousness rejection of all claims,
applicants had waited the maximum period to reply (6
months), then abandoned the application in favor of a
substantially identical continuation application, then
received another obviousness rejection of all claims,
again waited the maximum period to reply, and then
again abandoned the application in favor of a second
August 2001
800-24
continuation application substantially identical to the
original filing. On the other hand, in General Foods
Corp. v. Studiengesellschaft Kahle mbH, 972 F.2d
1272, 23 USPQ2d 1839 (Fed. Cir. 1992), the court
elected not to hold the patentee accountable for a
delay in issuing the first filed application until after
the second filed application issued as a patent, even
where the patentee had intentionally refiled the first
filed application as a continuation-in-part after receiving
a Notice of Allowance indicating that all claims
presented were patentable. Similarly, where, through
no fault of the applicant, the claims in a later filed
application issue first, an obvious-type double patenting
rejection is improper, in the absence of a two-way
obviousness determination, because the applicant
does not have complete control over the rate of
progress of a patent application through the Office. In
re Braat, 937 F.2d 589, 19 USPQ2d 1289 (Fed. Cir.
1991). While acknowledging that allowance of the
claims in the earlier filed application would result in
the timewise extension of an invention claimed in the
patent, the court was of the view that the extension
was justified under the circnmstances in this case,
indicating that a double patenting rejection would be
proper only if the claimed inventions were obvious
over each other - a two-way obviousness determination.
Form paragraph 8.33 and the appropriate one of
form paragraphs 8.34-8.37 may be used to make nonstatutoryrejections
of the obvious type.
'If 8.33 Basis for Nonstatutory Double Patenting,
"Heading" Only
The nonstatutory double patentingrejection is based on ajudicially
created doctrine grounded in public policy (a policy
reflected in the statute) so as to preventtheunjustifiedor improper
timewise extension of the "right to exclude" granted by a patent
and to prevent possible harassment by multiple assignees. See In
re Goodman, 11 F.3d 1046,29 USPQ2d 2010 (Fed. Cir. 1993); In
re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van
Omum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel,
422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington,
418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR
1.321(c) may be used to overcome an actual or provisional rejection
based on a nonstatutory double patenting ground provided the
conflicting application or patent is shown to be commonly owned
with this application. See 37 CPR 1.130(h).
Effective January "1, 1994,a registered attorney or agent of
record may sign a terminal disclaimer. A terminal disclaimer
signed by the assignee must fully comply with 37 CPR 3.73(b).

RESTRICTION IN APPLICATION FILED UNDER 35U.S.c. Ill; DOUBLE PATENTING 804
fundamental reason for the rule is to prevent unjustified
timewise extension ofthe right to exclude granted
by a patent no matter how the extension is brought
about. To ... prevail here, appellant has the burden of
establishing that the invention claimed in his patent is
'independent and distinct' from the invention of the
appealed claims...appellant has clearly not established
the independent and distinct character of the
inventions of the appealed claims." 397 F.2d at 354­
55, 158 USPQ at 214-15 (emphasis in original). The
court observed;
The controlling fact is that patent protection for the
clips, fully disclosed in and covered by the claimsof the
patent, would be extended by.allowance of the appealed
claims. Under the circumstance of the instant case,
wherein we find no valid excuse or mitigating circumstances
making it either reasonable or equitable to make
an exception, and whereinthere is no terminal disclaimer,
the rule against"doublepatenting" mustbe applied.
397 F.2d at 355, 158 USPQ at 215.
The decision in In re Schneller did not establish a
rule of general application and thus is limited to the
particular set of facts set forth in that decision. The
court in Schneller cautioned "against the tendency to
freeze into rules of general application what, at best,
are statements applicable to particular fact situations."
Schneller, 397 F.2d at 355, 158 USPQ at 215. Nonstatutory
double patenting rejections based on
Schneller will be rare. The Technology Center (TC)
Director must approve any nonstatutory double patenting
rejections based on Schneller. If an examiner
determines that a double patenting rejection based on
Schneller is appropriate in his or her application, the
examiner should first consult with his or her supervisory
patent examiner (SPE). If the SPE agrees with
the examiner then approval of the TC Director must
be obtained before such a nonstatutory double patenting
rejection can be made.
A fact sitnation similar to that in Schneller was presented
to a Federal Circuit panel in In re Kaplan,
789 F.2d 1574, 229 USPQ 678 (Fed. Cir. 1986).
Kaplau had been issued a patent on a process of making
chemicals in the presence of an organic solvent.
Among the organic solvents disclosed and claimed as
being nseful were tetraglyme and sulfolane. One
unclaimed example in the patent was specifically
directed to a mixture of these two solvents. The
claims in the application to Kaplan and Walker, the
application before the Office, were directed to essentially
the same chemical process, but requiring the use
of the solvent mixture of tetraglyme and sulfolane. In
reversing the double patenting rejection, the court
stated that the mere fact that the broad process claim
of the patent requiring an organic solvent reads on or
"dominates" the narrower claim directed to basically
the same process using a specific solvent mixture
does not, per se, justify a double patenting rejection.
The court also pointed out that the double patenting
rejection improperly used the disclosure of the joint
invention (solvent mixture) in the Kaplan patent specification
as though it were prior art.
A significant factor in the Kaplan case was that the
broad invention was invented by Kaplan, and the narrow
invention (i.e., using a specific combination of
solvents) was invented by Kaplan and Walker. Since
these applications (as the applications in Braat) were
filed before the Patent Law Amendments Act of 1984
(Pub. Law 98-622, November 8, 1984) amending 35
U.S.C. 116 to expressly authorize filing a patent application
in the names of joint inventors who did not
necessarily make a contribution to the invention
defined in each claim in the patent, it was necessary to
file multiple applications to claim both the broad and
narrow inventions. Accordingly, there was a valid reason,
driven by statute, why the claims to the specific
solvent mixture were not presented for examination in
the Kaplan patent application.
Each double patenting situation must be decided on
its own facts.
Form paragraph 8.33 and the appropriate one of
form paragraphs 8.38 (between an issued patent and
one or more applications) and 8.39 (provisional rejections)
may be used to make this type of nonstatutory
double patenting rejection.
'f[ 8.38 Double Patenting- Non-Statutory (Based Solely on
Improper Timewise Extension of Patent Rights) With a
Patent
Claim [1] rejected under the judicially created doctrine of double
patenting over claim [2] of U. S. Patent No. [3] since the
claims, if allowed, would improperly extend the "rightto exclude"
already granted in the patent.
The subject matter claimed in the instant application is fully
disclosed in the patent and is covered by the patent since the
patent and the application are claiming common subject matter, as
follows: [4]
Furthermore, there is no apparent reason why applicant was
prevented from presenting claims corresponding to those of the
instant application during prosecution of the application which
800-27 August 2001

804 MANUALOF PATENT EXAMINING PROCEDURE
matured into a patent. See In re Schneller, 397 F.2d 350, 158
USPQ 210 (CCPA 1968). See also MPEP § 804.
Examiner Note:
1. This form paragraph should only be used where. approval
from the, TC Director to make a nonstatutory double. patenting
rejection based orrIn re Schneller has been obtained.
2. Use this form paragraph only when the subject matterof the
claim(s) is fully disclosed in, and covered by at least one claim of,
an issued U.S. Patent which is commonly owned or where there is
common inventorship (one or more inventors in common).
3. In bracket 3, insert the number of the patent.
4. In brecket.a, insert a description of the subject matter being
claimed which is covered in the patent.
5. Form paragraph 8.33 must precede anyone of form paragraphs
8.34 to 8.39 and must be used only ONCE in an Office
action.
6. If evidence indicates that the conflicting patent is prior art
under 35 U.S.C. 102(f) or (g), a rejection should additionally be
made under 35 U.S.c. 102(1)/103(a) or 102(g)/103(a) using form
paragraph 7.21.
7. lfthe patent is to another inventive entity and has an earlier
U.S. filing date, a rejection under 35 U.S.C. 102(e)//103(a) may
be made using paragraph 7.21.02. For applications filed on or
after November 29,. 1999; rejections under 35 U.S.c. 102(e)/
103(a) should not be made or maintained if the applicant provides
evidence that the subject matter of the reference and the claimed
invention were, at the time the invention was made, owned by the
same person or subject to an obligation of assignment to the same
person.
'f[ 8.39 Double Patenting - Non-Statutory (Based Solely on
Improper Timewise Extension of Patent Rights) With
Another Application
Claim [1] provisionally rejected under the judicially created
doctrine of double patenting over claim [2]of copending Application
No. [3]. This is a provisional double patenting rejection
because the.conflicting claims have not in fact-been patented.
The subject matter claimed in the instant. application is fully
disclosed in the referenced copending application and would be
covered by any patent granted on that copending application since
the referenced copending application andthe instant application
are claiming common subject matter, as follows: [4]
Furthermore, there is no apparent reason why applicant would
be prevented from presenting claims corresponding to those of the
instant application in the other copending application. See In re
Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968). See also
MPEP § 804.
Examiner Note:
1. This form paragraph should only be used where approval
from the TC Director to make a nonstatutory double patenting
rejection based on In re Schneller has been obtained.
2. Use this form paragraph only when the subject matter of the
claim(s) is fully disclosed in, and covered by at least one claim of,
another copending application which is commonly owned or
where there is common inventorship (one or more inventors in
common).
August2001
800-28
3. In bracket 3, insert the numberof the conflicting application.
4. In bracket 4, insert a description of the subject matter being
claimed which is covered in the copending application.
5. Form paragraph 8.33 must precede anyone of form paragraphs
8.34 to 8.39 and must be used only ONCE in an office
action.
6.. Ifthe conflicting application is currently commonly assigned
but the file.does not establish that the conflicting inventions were
commonly owned at the time the later invention was made, form
paragraph 8.28 may be used in place of or in addition to this form
paragraph to also resolve any issues relating to priority under 35
U.S.C. 102(1) andlor (g).
7. A provisional double patenting rejection should also be made
in the conflicting application.
8. If evidence shows that either application is prior art unto the
other under 35 U.S.C. 102(1) or (g) and the copending application
has not been disqualified (as prior art in a 103 rejection based on
common ownership), a rejection should additionally be made in
the other application under 35 U.S.C. 102(1)/103(a) or 102(g)/
103(a) using form paragraph 7.21.
9. If the disclosure of one application may be used to support a
rejection of the other and the applications have different inventive
entities and different U.S. filing dates, use paragraph 7.21.01 to
additionally make a rejection under 35 U.S.c. 102(e)/103(a). For
applications filed on or after November 29, 1999, rejectionsunder
35 U.S.C. 102(e)/103(a) should not he made or maintained if the
applicant provides evidence that the subject matter of the reference
and the claimed invention were, at the time the invention was
made,owned by the same person or subject to an obligation of
assignment to the same person.
3. DesignIPlant- Utility Situations
Double patenting issues may be raised where an
applicant has filed both a utility patent application (35
U.S.C. 111) and either an application for a plant
patent (35 U.S.C. 161) or an application for a design
patent (35 U.S.C. 171). In general, the same double
pateoting principles and criteria that are applied in
utility-utility situations are applied to utility-plant or
utility-design situations. Double patenting rejections
in utility-plant situations may be made inappropriate
circumstances.
Although double patenting is rare in the context of
utility versus design patents, a double patenting rejection
of a pending design or utility application can be
made on the basis of a previously issued utility or
design patent, respectively. Cannan Indus. Inc. v.
Wahl, 724 F.2d 932, 220 USPQ 481 (FeeL Cir. 1983).
The rejection is based on the public policy preventing
the extension of the term of a patent. Double patenting
may be found in a design-utility situation irrespective
of whether the claims in the patent relied on in the
rejection and the claims in issue involve the same
-,"".,."'"

RESTRICTION IN APPLICATION FILEDUNDER35 U.S.C. 111;DOUBLEPATENTING 804
invention, or whether they involve inventions. which
are obvious variations of one another. In re Thorington,
418 F.2d 528, 163 USPQ 644 (CCPA 1969).
In Carman Indus., the court held that no donble
patenting existed between a design and utility patent
since the claims in the utility patent, drawn to the interior
construction of a flow promoter, were not directed
to the same invention or an obvious variation of the
invention claimed in a design patent directed to the
visible external surface confignration of a storage bin
flow promoter. The majority opinion in this decision
appears to indicate that a two-way obviousness determination
is necessary in design-utility cases. 724 F.2d
at 940-41, 220 USPQ at 487-88. But see Carman
Indus. (J. Nies, concurring).
In Thorington, the court affirmed a double patenting
rejection of claims for a fluorescent light bulb in a
utility patent application in view of a previously
issued design patent for the same bulb. In another
case, a double patenting rejection of utility claims for
a finger ring was affirmed in view of an earlier issued
design patent, where the drawing in both the design
patent and the utility application illustrated the same
article. In re Phelan, 205 F.2d 183, 98 USPQ 156
(CCPA 1953). A double patenting rejection of a
design claim for a flashlight cap and hanger ring was
affirmed over an earlier issued utility patent. In re
Barber, 81 F.2d 231, 28 USPQ 187 (CCPA 1936). A
double patenting rejection of claims in a utility patent
application directed to a balloon tire construction was
affirmed over an earlier issued design patent. In re
Hargraves, 53 F.2d 900,11 USPQ 240 (CCPA 1931).
III, CONTRAST BETWEEN DOUBLE PAT­
ENTING REJECTION AND REJEC­
TIONS BASED ON PRIOR ART
Rejections over a patent or another copending
application based OIl double patenting or 35 U.S.c.
l03(a) are similar in the sense that both require comparison
of the claimed subject matter with at least part
of the content of another patent or application, and
both may require that an obviousness analysis be
made. However, there are significant differences
between a rejection based on double patenting and
one based on 35 U.S.C. 102(e) prior art under
35 U,S.c. 103(a). In re Bartfeld, 925 F.2d 1450,
17 USpQ2d 1885 (Fed. Cir. 1991).
One significant difference is that a double patenting
rejection mnst rely on a comparison with the claims in
an issued or to be issued patent, whereas an obvious"
ness rejection based on the same patent under
35 U.S.C. 102(e)/103(a) relies on a comparison with
what is disclosed (whether or not claimed) in the same
issned or to be issued patent. In a 35 U.S.C. 102(e)/
103(a) rejection over a prior art patent, the reference
patent is available for all that it fairly discloses to one
of ordinary skill in the art, regardless of what is
claimed. In re Bowers, 359 F.2d 886, 149 USPQ 570
(CCPA 1966).
A second significant difference is that a terminal
disclaimer cannot be used to obviate a rejection based
on 35 U.S.C. 102(e)1l03(a) prior art. In re Fong,
378 F,2d 977, 154 USPQ 25 (CCPA 1967). The purpose
of a terminal disclaimer is to obviate a double
patenting rejection by removing the potential harm to
the public by issuing a second patent, and not to
remove a patent as prior art.
Where the inventions are made by inventors that
have assigned their rights to a common assignee, the
assignee can take some preemptive measures to avoid
having a copending application become prior art
under 35 U.S.C. 102(e). The applications can be filed
on the same day, or copending applications can be
merged into a single continuation-in-part application
and the parent applications abandoned. If these steps
are undesirable or the first patent has issued, the prior
art effect of the first patent may be avoided by a showing
under 37 CFR 1.132 that any unclaimed invention
disclosed in the first patent was derived from the
inventor of the application before the examiner in
which the 35 U.S.C. 102(e)/103(a) rejection was
made. In re Katz, 687 F.2d 450,215 USPQ 14 (CCPA
1982). See also MpEP § 716.10. It may also be possible
for applicant to respond to a 35 U.S.c. 102(e)/
103(a) rejection by showing, under 37 CFR 1.131,
that the date of invention of the claimed subject matter
was prior to the effective filing date of the reference
patent which has been relied upon for its
unclaimed disclosure. See MPEP § 715. See also
37 CFR 1.130 and MPEP § 718 for affidavits or declarations
to disqualify a commonly owned patent as
prior art under 35 U.S.C. 103.
800-29 August 2001

RESTRICTION IN APPLICATION FILED UNDER 35 u.s.c. 111; DOUBLE PATENTING
(D) The requirement for restriction (holding of
lack of unity of invention) was only made in an international
application by the International Searching
Authority or the International Preliminary Examining
Authority.
(E) The requirement for restriction was withdrawn
by the examiner before the patent issues. In re
Ziegler, 443 F.2d 1211,170 USPQI29 (CCPA 1971).
(F) The claims of the second application are
drawn to the "same invention" as the first application
or patent. Studiengesellschaft Kahle mbH v. Northern
Petrochemical Co., 784 F.2d 351, 228 USPQ 837
(Fed. Cir. 1986).
While the situation should not arise where appropriate
care is exercised in defining the independent
and distinct inventions in a restriction requirement,
the issue might arise as to whether 35 U.S.C. 121 prevents
the use of a double patenting rejection when the
identical invention is claimed in both the patent and
the pending application. Under these circumstances,
the Office will make the double patenting rejection
because the patentee is entitled only to a single patent
for an invention. As expressed in Studiengesellschajt
Kahle, 784 F.2d at 361, 228 USPQ at 844, (J. Newman,
concurring), " 35 U.S.C. 121 of course does not
provide that multiple patents may be granted on the
identical invention."
804.02
I, STATUTORY
Avoiding a Double
Patenting Rejection
A rejection based on the statutory type of double
patenting can be avoided by amending the conflicting
claims so that they are not coextensive in scope.
Where the conflicting claims are in one or more pending
applications and a patent, a rejection based on
statutory type double patenting can also be avoided by
canceling the conflicting claims in all the pending
applications. Where the conflicting claims are in two
or more pending applications, a provisional rejection
based on statutory type double patenting can also be
avoided by canceling the conflicting claims in all but
one of the pending applications. A terminal disclaimer
is not effective in overcoming a statutory double patenting
rejection.
The use of a 37 CFR 1.131 affidavit in overcoming
a statutory double patenting rejection is inappropriate.
804.02
In re Dunn, 349 F.2d 433, 146 USPQ 479 (CCPA
1965). Knell v. Muller, 174 USPQ 460 (Comm'r. Pat.
1971), citing the CCPA decisions in In re Ward, 236
F.2d 428, III USPQ 101 (CCPA 1956); In re Teague,
254 F.2d 145, 117 USPQ 284 (CCPA 1958); and In re
Hidy, 303 F.2d 954, 133 USPQ 650 (CCPA 1962).
II. NONSTATUTORY
37 CFR 1.130. Affidavit or declaration to disqualify
commonly owned patent or published application as prior
art.
*****
(b) When an application or a patent under reexamination
claims an invention which is not patentably distinct from an
invention claimed in,a commonly owned patent with the same or a
different inventive entity, a double patenting rejection will be
made in the application or a patent under reexamination. A judicially
created double-patenting rejection may be obviated by filing
a terminal disclaimer in accordance with § 1.321(c).
A rejection based on a nonstatutory type of double
patenting can be avoided by filing a terminal disclaimer
in the application or proceeding in which the
rejection is made. In re Vogel, 422 F.2d 438,
164 USPQ 619 (CCPA 1970); In re Knohl, 386 F.2d
476, 155 USPQ 586 (CCPA 1967); and In re Griswold,
365 F.2d 834, 150 USPQ 804 (CCPA 1966).
The use of a terminal disclaimer in overcoming a nonstatutory
double patenting rejection is in the public
interest because it encourages the disclosure of additional
developments, the earlier filing of applications,
and the earlier expiration of patents whereby the
inventions covered become freely available to the
public. In re Jentoft, 392 F.2d 633, 157 USPQ 363
(CCPA 1968); In re Eckel, 393 F.2d 848, 157 USPQ
415 (CCPA 1968); and In re Braithwaite, 379 F.2d
594, 154 USPQ 29 (CCPA 1967).
The use of a 37 CFR 1.131 affidavit in overcoming
a double patenting rejection is inappropriate because
the claim or claims in the application are being
rejected over a patent which claims the rejected
invention. In re Dunn, 349 F.2d 433, 146 USPQ 479
(CCPA 1965). 37 CFR 1.131 is inapplicable if the
claims of the application and the patent are "directed
to substantially the same invention". It is also inapplicable
if there is a lack of "patentable distinctness"
between the claimed subject matter, Knell v. Muller,
174 USPQ 460 (Comm'r. Pat. 1971), citing the court
decisions in In re Ward, 236 F.2d 428, III USPQ 101
800-31 August 2001

804.02 MANUAL OF PATENT EXAMININGPROCEDURE
(CCPA 1956);ln re Teague, 254 F.2d 145, 117 USPQ
284 (CCPA 1958); and In re Hidy, 303 F.2d 954, 133
USPQ 65 (CCPA 1962).
Apatentee orapplicant may disclaim or dedicate to
the public the entire term,or any terminal part of the
term of a patent. 35 U.S.C. 253. The statute does not
provide for a terminal disclaimer of only a specified
claim or claims. The terminal disclaimer must operate
with respect to all claims in the patent.
The filing of a terminal disclaimer to obviate a
rejection based on nonstatutory double patenting is
not an admission of the propriety of the rejection.
Quad Environmental Technologies Corp. v. Union
Sanitary District, 946 F.2d 870, 20 USPQ2d 1392
(Fed. Cir. 1991). The court indicated that the "filing of
a terminal disclaimer simply serves the statutoryfunction
of removing the rejection of.double patenting,
and raises neither a presumption nor estoppel on the
merits of the rejection."
A terminal disclaimer filed to obviate a double patenting
rejection is effective only with respect to. the
application identified in the disclaimer, unless by its
terms it extends to continuing applications. If an
appropriate double patenting rejection of the nonstatutory
type is made in two or more pending applications,
an appropriate terminal disclaimer must be filed
in each application.
Claims that differ from each other (aside from
minor differences in language, punctuation, etc.),
whether or not the difference is obvious, are not considered
to be drawn to the same invention for double
patenting purposes under 35 U.S.C. 101. Incases
where .. the difference in claims is obvious, terminal
disclaimers are .effective to overcome double patenting
rejections. However, such terminal disclaimers
must include a provision that the patent shall be unenforceable
if it ceases to be commonly owned with the
other application or patent. Note 37 CFR l.321(c). It
should be emphasized that a terminal disclaimer cannot
be used to overcome a rejection under 35 U.S.c.
102(e)/103(a).
III. TERMINAL DISCLAIMER REQUIRED
DESPITE REQUEST TO ISSUE ON COM­
MON ISSUE DATE
Applicants are cautioned that reliance upon a common
issue date cannot effectively substitute for the filing
of one Or more terminal disclaimers in order to
August 2001 800-32
overcome a proper double patenting rejection, particularly
since a common issue date alone does not avoid
the potential problem of dual ownership of patents to
patentably indistinct inventions. In any event, the
Office cannot ensure that two or more applications
will have a common issue date.
IV. DISCLAIMING MULTIPLE DOUBLE PA­
TENTING REFERENCES
If multiple conflicting patents and/or pending applications
are applied in double patenting rejections
made in a single application, then prior to issuance of
that application, it is necessary to disclaim each one of
the conflicting double patenting references applied,
rather than disclaiming only the conflicting double
patenting reference with the earliest issue date
(assuming atleast one of the references is a patent). A
terminal disclaimer fee is required for each terminal
disclaimer moo. To avoid paying multiple terminal
disclaimer fees, a single terminal disclaimer may be
filed, Wherein all the conflicting double patenting references
are disclaimed therein.
Disclaiming each one of theconflicting double patenting
references is necessary to avoid the problem of
dual. ownership of patents to patentably indistinct
inventions in the event that the patent issuing from the
application being examined ceases to be commonly
owned with anyone of the double patenting references
that have issued or may issue as a patent. Note
that 37 CPR l.321(c)(3)requires that a terminal disclaimer
"[i]nclude a provision that any patent granted
on that application or any patent subject to the reexamination
proceeding shall be enforceable only for
and during such period that said patent is commonly
owned with the application or patent which formed
the basis for the rejection."
V, REQUIREMENTS OF ATERMINAL DIS­
CLAIMER
A .terminal disclaimer is a statement filed by an
owner (in whole or in part) of a patent or a patent to
be granted that is used to disclaim or dedicate a portion
of the entire term of all the claims of a patent. The
requirements for a terminal disclaimer are set forth in
37 CFR 1.321. Sample forms of a terminal disclaimer,
and guidance as to the filing and treatment of a terminal
disclaimer,are provided in MPEP § 1490.

RESTRICTION IN APPLICATION FILED UNDER 35 U.S.C. Ill; DOUBLE PATENTING 804.03
VI. TERMINAL DISCLAIMERS REQUIRED
TO OVERCOME JUDICIALLY CREATED
DOUBLE PATENTING REJECTIONS IN
APPLICATIONS FILED ON OR AFTER
JUNES, 1995
Public Law 103-465 (1994) ameuded 35U.S.C.
154(a)(2) to provide that auy patent issuiug on a utility
or plant application filed on or after June 8, 1995
will expire 20 years from its filing date, or, if the
application claims the benefit of an earlier filed application
under 35 U.S.C. 120, 121, or 365(c), 20 years
from the earliest filing date for which a benefit under
35 U.S.C. 120, 121, or 365(c) is claimed. Therefore,
any patent issuing ou a continuiug utility or plant
application filed on or after June 8, 1995 will expire
20 years from the earliest filing date for which a benefit
is claimed under 35 U.S.C. 120, 121, or 365(c),
subject to the provisions of 35 U.S.C. 154(b).
There are at least two reasons for insisting upon a
terminal disclaimer to overcome a judicially created
double patenting rejection in a continuing application
subject to a 20-year term under 35 U.S.C. 154(a)(2).
First, 35 U.S.c. 154(b) includes provisions for patent
term extension based upon prosecution delays during
the application process. Thus, 35 U.S.C. 154 does not
ensure that any 1?atent issuing on a continuing utility
or plant application filed on or after June 8, 1995 will
necessarily expire 20 years from the earliest filing
date for which a benefit is claimed under 35 U.S.C.
120, 121, or 365(c). Second, 37 CFR 1.321(c)(3)
requires that a terminal disclaimer filed to obviate a
judicially created double patenting rejection include a
provision that any patent granted ou that application
be enforceable only forand duriug the period that the
patent is commou1y owned with the application or
patent which formed the basis for the rejection. This
requirement serves to avoid the potential for harassment
of au accused infringer by multiple parties with
patents covering the same patentable inventiou (37
CPR 1.601(n». See, e.g., In re Van Ornum, 686 F.2d
937, 944-48, 214 USPQ761, 767-70 (CCPA 1982).
Not insisting upou a terminal disclaimer to overcome
a judicially created double patenting rejectiou in an
application subject to a 20-year term under 35 U.S.c.
154(a)(2) would result in the potential for the problem
that 37 CFR l.321(c)(3) was promulgated to avoid.
Accordingly. a terminal disclaimer under 37 CFR
1.321 is required in an application to overcome a
judicially created double pateuting rejection, even if
the application was filed on or after June 8, 1995 and
claims the benefit under 35 U.S.c. 120,121, or 365(c)
of the filing date of the patent or application which
forms the basis for the rejection. Examiners should
respond to arguments that a terminal disclaimer under
37CFR 1.321 should not be required in a continuing
application filed on or after June 8, 1995 to overcome
a judicially created double patenting rejection due to
the change to 35 U.S.C. 154 by citing to this section
of the MPEP or to the Official Gazette notice at 1202
a.G.I12 (Sept. 30, 1997).
804.03
'I'reatment of Commonly
Owned Cases ofDifferent
Inventive Entities
35 u.s. C. 103. Conditions for patentability; non-obvious
subject matter.
*****
(c) Subject matter-developed by another person, which qualifies
as priorart only under one or more of subsections (e), (f), and
(g) of _section 102 of _this title, shall not preclude patentability
under this section where the subject matter and the claimed invention
were, at the time the invention was made, owned by the same
person or subject to-an obligation of 'assignment to the same person.
37 CFR 1.78. Claiming benefit of earlier filing date and
cross references to other applications.
*****
(c) If an application or a patent under reexamination and at
least one other application naming different inventors are owned
by the Same party and contain conflicting claims, and there is DO
statement of record indicating that the claimed inventions were
commonlyowned; orsubject to an obligation ofassignment to the
same person at the time the later invention was made, the Office
may require the assignee to state whether the claimed inventions
were commonly owned or subject to an obligation of assignment
to the same person at the time the later invention was made, and,if
not, indicatewhich named inventor is the prior inventor.
800-33 August 2001

RESTRICTION IN APPLICATION FILED UNDER 35U.S.c. Ill; DOUBLE PATENTING
sions of 35 U.S.C. 103(c), is complete without any
further inquiry under 37 CFR 1.78(c) as to the prior
inventor.
Before making the requirement to identify the prior
inventor under 37 CFR 1.78(c), with its threat to hold
the application abandoned if the statement is not made
by the assignee, the examiner must make sure that
claims are present in each application which are conflicting
as defined in MPEP § 804. See In. re Rekers,
203 USPQ 1034 (Comm'r Pat. 1979).
In some situations the application file wrappers
may reflect which invention is the prior invention,
e.g., by reciting that one invention is an improvement
of the other invention. See Margolis v. Banner,
599 F.2d 435, 202 USPQ 365 (CCPA 1979) (Court
refused to uphold a holding of abandonment for failure
to name the prior inventor since the record
showed what was invented by the different inventive
entities and who was the prior inventor.).
An application in which a requirement to name the
prior inventor has been made will not be held abandoned
where a timely response indicates that the other
application is abandoned or will be permitted to
become abandoned and will not be filed as a continuing
application. Such a response will be considered
sufficient since it renders the requirement to identify
the prior inventor moot because the existence of conflicting
claims is eliminated. Also note that the conflict
between two or more pending applications can be
avoided by abandoning the applications and filing a
continuation-in-part application merging the conflicting
inventions into a single application.
A. Excluding A Prior Art Reference Where Common
Ownership Or Assignment Obligation
Exists
In order to be disqualified as prior art under
35 U.S.c. 103(c), the subject matter that would otherwise
be prior art to the claimed invention and
the claimed invention must be commonly owned at
the time the claimed invention was made. For applications
filed prior to November 29, 1999, the subject
matter that is disqualified as prior art under 35 U.S.C.
103 is strictly limited to subject matter that qualifies
as prior art only under 35 U,S.C. 102(f) or 35 U.S.c.
102(g) and was commonly owned with the claimed
invention at the time the claimed invention was made.
For applications filed on or after November 29, 1999,
804,03
the subject matter which was prior art under 35 U.S.c.
103 via 35 U.S.C. 102(e) is also disqualified as prior
art against the claimed invention if that subject matter
and the claimed invention were commonly owned at
the time the claimed invention was made. 35 U.S.c.
103(c) applies only to prior art usable in an obviousness
rejection under 35 U.S.C. 103.
To rely upon 35 U.S.c. 103(c), a statement of common
ownership must be provided in the record of the.
application being examined. See MPEP § 706.02(1)(2)
regarding evidence required to establish common
ownership.
For applications filed prior to November 29, 1999,
the subject matter which was prior art under 35 U.S.c.
103 via 35 U.S.C. 102(e) will not be disqualified as
prior art under 35 U.S.c. 103(c). However, the prior
art under 35 U.S.C. 102(e)/103(a) may be disqualified
under 37 CFR 1.130 if: (A) the prior art and the application
being examined are commonly owned; (B) the
prior art does not anticipate the claimed invention of
the application; (C) a terminal disclaimer pursuant to
37 CFR 1.321 is filed; and (D) an oath or declaration
is filed stating that the application being examined
and the prior art are currently owned by the same
party, and that the inventor named in the application is
the prior inventor under 35 U.S.c. 104. See MPEP
§ 718.
Ill. REJECTIONS UNDER 35 U.S.C. 102 AND
103 AND DOUBLE PATENTING
Form paragraphs 8.27, 8.28 and 8.28.01 may be
used to require the applicant to name the prior inventor
under 37 CFR l.78(c).
'1/ 8.27 Different Inventors, Common Assignee, Same
Invention
Claim [1] directed to the same invention as that of claim [2] of
commonly assigned [3]. The issue of priority under 35 U.S.c.
102(g) and possibly 3S U.S.C. 102(1) of this single invention must
be resolved.
Since the U.S. Patent and Trademark Office normally will not
institute an interference between applications or a patent and an
application of common ownership (see MPEP § 2302), the
assignee is required to state which entity is the priorinventor of
the conflictingsubject, matter. A terminal disclaimer has no effect
in this situation since the basis for refusing-more than one patent is
priority of invention under 35 U.S.c. 102(f) or (g) and not an
extension of monopoly.
Failure to comply with this requirement will result in a holding
of abandonment of this application.
800_35 August 2001

804.03 MANUAL OF PATENT EXAMINING PROCEDURE
Examiner Note:
1. In bracket 3, insert the U.S. patent number or the copending
application number.
2. The claims listed in brackets 1 and 2 must be for the same
invention. If one invention is obvious in view of the other, do not
use this form paragraph; see form paragraph 8.28.
3. A provisional or actual statutory double patenting rejection
may also be made using form paragraphs 8.31 or 8.32.
4. Ifthe commonly assigned application or patent has an earlier
U.S. filing date, a rejection under 35 U.S.c. 1O.2(e) may also be
made using form paragraph 7.15.01 or 7.15.02.
'j[ 8.28 Different Inventors, Common Assignee, Obvious
Inventions, No Evidence ofCommon Ownership atTime of
Invention
Claim [1] directed to an invention not patentably distinct from
claim [2] of commonly assigued [3]. Specifically, [4].
Examiner Note:
1. This form paragraph should be used when the application
being examined is commonly assigned with a conflicting application
or patent, but there is no indication that they were commonly
assigned at the time the invention was actually made.
2. If the conflicting claims are in a patent or a published application
with an earlier U.S. filing date. make a rejection under 35
U.S.C. 102(e)/103(a) using form paragraph 7.21.02 in addition to
this paragraph.
3. If the conflicting claims are in a commonly assigned,
copending application with an earlier filing date, make a provisional
102(e)1103(a) rejectiou using form paragraph 7.21.01 in
addition to this paragraph.
4. In bracket 3, insert the number of the conflicting patent or
application.
5. An obviousness double patenting rejection may also be
included in the action using form paragraphs 8.34 to 8.36.
6. In bracket 4, explain why the claims in the conflicting cases
are not considered to be distinct.
7. Form paragraph 8.28.01 MUST follow this paragraph.
A showing that the inventions were commonly owned at the time
the invention in this application was made will preclude a rejection
under 35 U.S.C. 103(a) based upon the commonly assigned
case as a reference under 35 U.S.c. 102(1) or (g), or 35 U.S.C.
102(e) for applications filed on or after November 29, 1999.
'j[ 8.28.01 Advisory Information Relating to Paragraph
8.28
The U.S. Patentand Trademark Office normally will not institute
an interference between applications or a patent and an application
of common ownership (see MPEP§ 2302). Commonly
assigned [1], discussed above, would form the basis for it. rejection
of the noted claims under 35 U.S.C. 103(a)if the commonly
assigned case qualifies as prior art under 35 U.S.C. 102(f) or (g)
and the conflicting inventions were not commonly owned at the
time the invention in this application was made. In order for the
examiner to resolve this issue, the assignee is required under 35
U.S.c. 103(c) and 37 CFR 1.78(c) to either show that the conflicting
inventions were commonly owned at the time the invention in
this application was made or to name the prior inventor of the con-
August 2001 800-36
flicting subject matter. Failure to comply with this requirement
will result in a holding of abandonment of the application.
A showing that the inventions were commonly owned at the
time the invention in this application was made will preclude a
rejection under 35 U.S.c. 103(a) based upon the commonly
assigned case as a reference under 35 U.S.C. 102(f) or (g), or 35
U.S.C. 102(e) for applications filed on or after November 29,
1999.
Examiner Note:
This form paragraph should follow paragraph 8.28 and should
only be used ONCE in an Office action.
If it is determined that the provisions of 35 U.S.C.
103(c) apply to the commonly owned conflicting
inventions of different inventive entities and thereby
overcoming the obviousness rejection(s), double patenting
rejection(s) should be made as appropriate. If,
however, it is determined that the provisions of
35 U.S.C. 103(c) do NOT apply because the inventions
were not commonly owned or subject to an obligation
of assignment to the same person at the time
the later invention was made, and there is evidence of
record to indicate that a patent or application is prior
art against the application being examined, the examiner
should make (A) the appropriate double patenting
rejection(s), and (B) the appropriate prior art rejection(s)
under 35 U.S.C. 102 and/or 35 U.S.C. 103 in
the application being examined. See Charts I-A, I-B,
II-A, II-B, III-A and III-B in MPEP § 804. Rejections
under 35 U.S.C. ]02 or 35 U.S.c. ]03 cannot be obviated
solely by filing a terminal disclaimer.
'j[ 7.15 Rejection, 35 U.S.c. 102(a), (b) Patent or
Publication. and (g)
Claim [1] rejected under 35 U.S.C. 102[2] as being [3] by [4].
Examiner Note:
1. In bracket 2, insert the appropriate paragraph letter or letters
of35 U.S.c. 102 in parentheses. Ifparagraph (e) of35 U.S.C.l02
is applicable, use form paragraph 7.15.02.
2. In bracket 3, insert either -clearly anticipated-. or -eanticipated-.
with an explanation at the end of the paragraph.
3. In bracket 4, insert the prior art relied upon.
4. This rejection must be preceded either by form paragraph
7.07 and form paragraphs 7.08, 7.09, and 7.14 as appropriate, or
by form paragraph 7.103.
5. If35 U.S.C. 102(e) is also being applied, this paragraph must
be followed by either form paragraph 7.15.02 or 7.15.03.
'j[ 7.19 Rejection, 35 U.S.c. 102(j), Applicant Not the
Inventor
Claim [1] rejected nnder 35 U.S.c. 102(1) becanse the applicant
did not invent the claimed subjectmatter. [2]

RESTRICTION IN APPLICATION FILED UNDER 35U.S.c. 111; DOUBLE PATENTING 806.04(a)
806 Determination of Distinctness
or Independence of Claimed
Inventions
The general principles relating to distinctness or
independence may be summarized as follows:
(A) Where inventions are independent (i.e., no
disclosed relation therebetween), restriction to one
thereof is ordinarily proper, MPEP § 806.04 ­
§ 806.04(i), though a reasonable number of species
may be claimed when there is an allowed (novel and
unobvious) claim generic thereto. 37 CFR 1.141,
MPEP § 809.02 -§ 809.02(e).
(B) Where inventions are related as disclosed but
are distinct as claimed, restriction may be proper.
(C) Where inventions are related as disclosed but
are not distinct as claimed, restriction is never proper.
Where restriction is required by the Office double
patenting cannot be held, and thus, it is imperative the
requirement should never be made where related
inventions as claimed are not distinct. For (B) and (C)
see MPEP § 806.05 - § 806.05(i) and § 809.Q3. See
MPEP § 802.0I for criteria for patentably distinct
inventions.
806.01
In passing upon questions of double patenting and
restriction, it is the claimed subject matter that is considered
and such claimed subject matter must be compared
in order to determine the question of
distinctness or independence.
806.02
Compare Claimed
Subject Matter
Patentability Over the Prior
Art Not Considered
For the purpose of a decision on the question of
restriction, and for this purpose only, the claims are
ordinarily assumed to be in proper form and patentable
(novel and unobvious) over the prior art.
This assumption, of course, is not continued after
the question of restriction is settled and the question
of patentability of the several claims in view of prior
art is taken up.
806.03 Single Embodiment, Claims
Defining Same Essential
Features
Where the claims of an application define the same
essential characteristics ofa single disclosed embodiment
ofan invention, restriction therebetween should
never be required. This is because the claims are but
different definitions of the same disclosed subject
matter, varying in breadth,or scope of definition.
Where such claims appear in different applications
optionally filed by the same inventor, disclosing the
same embodiments, see MPEP § 804 - § 804.02,
806.04
Independent Inventions
If it can be shown that the two or more inventions
are in fact independent, applicant should be required
to restrict the claims presented to but one of such
independent inventions. For example:
(A) Two different combinations, not disclosed as
capable of USe together, having different modes of
operation, different functions or different effects are
independent. An article of apparel such as a shoe, and
a locomotive bearing would be an example. A process
of painting a, house and a process of boring a well
would be a second example.
(B) Where the two inventions are process and
apparatus, andtheapparatuscannot be used to practice
the process or any part thereof, they are independent.
A specific process of molding is independent
from a molding apparatus which cannot, be used to
practice the specific process.
(C) Where species under a genus are independent,
for example, a genus of paper clips having species differing
in the manner in which a section of the wire is
formed in order to achieve a greater increase in its
holding power.
SPECIES ARE TREATED EXTENSIVELYIN THE
FOLLOWING SECTIONS.
806.04(a) Species - Genus
35 U.S.C. 121 provides that restriction may be
required to one of two or more independent and distinct
inventions. However, 37 CFR 1.141 provides
that a reasonable number of species may still be
800 c39 August 2001

RESTRICTION IN APPLICATION FILED UNDER 35 U.S.c. I I 1; DOUBLE PATENTING 806.04(b)
To exemplify, a claim tbat defines only tbe subcombination,
e.g., the mechanical structure of a joint, is
not a generic or genus claim to two different combinations,
e.g., a doughnut cooker and an automobile
transmission, each of which utilizes the same form of
joint.
806.04(d) Definition of a Generic Claim
In an application presenting three species illustrated,
for example, in Figures 1, 2, and 3, respectively,
a generic claim should read on each of these
views; but the fact that a claim does so read is not
conclusive that it is generic. It may define only an element
or subcombination common to the several species.
It is not possible to define a generic claim with that
precision existing in the case of a geometrical term. In
general, a generic claim should include no material
element additional to those recited in the species
claims, and must comprehend within its confines the
organization covered in each of the species.
For the purpose of obtaining claims to more than
one species in the same case, the generic claim cannot
include limitations not present in each of the added
species claims. Otherwise stated, the claims to the
species which can be included in a case in addition to
a single species must contain all the limitations of the
generic claim.
Once a claim that is determined to be generic is
allowed, all of the claims drawn to species in addition
to the elected species which include all the limitations
of the generic claim will ordinarily be obviously
allowable in view of the allowance of the generic
claim, since the additional species will depend
thereon or otherwise include all of the limitations
thereof. When all or some of the claims directed to
one of the species in addition to the elected species do
not include all the limitations of the generic claim,
then that species cannot be claimed in the same case
with the other species. See MPEP § 809.02(c).
806.04(e) Claims Restricted to Species
Claims are definitions of inventions. Claims are
never species. Claims may be restricted to a single
disclosed embodiment (i.e., a single species, and thus
be designated a specific species claim), or a claim
may include two or more of the disclosed embodi-
ments within the breadth and scope of definition (and
thus be designated a generic or genus claim).
Species are always the specifically different embodiments.
Species are usually but not always independent as
disclosed (see MPEP § 806.04(b» since there is usually
no disclosure of relationship therebetween. The
fact that a genus for two different embodiments is
capable of being conceived and defined, does not
affect the independence of the embodiments, where
the case under consideration contains no disclosure of
any commonality of operation, function or effect.
806.04(f) Claims Restricted to Species,
by Mutually Exclusive
haracteristics
Claims to be restricted to different species must be
mutually exclusive. The general test as to when
claims are restricted, respectively, to different species
is the fact that one claim recites limitations which
under the disclosure are found in a first species but
not in a second, while a second claim recites limitations
disclosed only for the second species and not the
first. This is frequently expressed by saying that
claims to be restricted to different species must recite
the mutually exclusive characteristics of such species,
806.04(h) Species Must Be Patentably
Distinct From Each Other
Where an applicant files a divisional application
claiming a species previously claimed but nonelected
in the parent case, pursuant to and consonant with a
requirement to restrict, there should be no determination
of whether or not the species claimed in the divisional
application is patentable over the species
retained in the parent case since such a determination
was made before the requirement to restrict was
made.
In a national application containing claims directed
to more than a reasonable number of species, the
examiner should not require restriction to a reasonable
number of species unless he or she is satisfied that he
or she would be prepared to allow claims to each of
the claimed species over the parent case, if presented
in a divisional application filed according to the
requirement. Restriction should not be required if the
800_41 August 2001

806.04(i) MANUALOF PATENT EXAMINING PROCEDURE
species claimed are considered clearly unpatentable
over each other.
In making a requirement for restriction in ail application
claiming plural species, the examiner should
group together species considered clearly unpatentable
over each other, with the statement that restriction
as between those species is not required.
Where generic claims are allowed in a national
application, applicant may claim in the same application
additional species as provided by 37 CFR 1.141.
Where, however, an applicant optionally files
another national application with claims to a different
species, or for a species disclosed but not claimed in a
parent case as filed and first acted upon by the examiner,
there should be close investigation to determine
the 'Presence or absence of patentable difference. See
MPEP § 804.01 and § 804.02.
806.04(i) Generic Claims Presented
for First Time After Issue
of Species
The Office no longer follows the practice of proltibiring
the allowance of generic claims that are presented
for the first time after the issuance of a
copending application claiming plural species.
Instead, the Office may reject the generic claims on
the grounds of obviousness-type double patenting.
Applicant may overcome such a rejection by filing a
terminal disclaimer. See In re Braithwaite, 379 F.2d
594, 154 USPQ 29 (CCPA 1967).
806.05
Related Inventions
Where two or more related inventions are being
claimed, the principal question to be determined in
connection with a requirement to restrict or a rejection
on the ground of double patenting is Whether or not
the inventions as claimed are di.stinct. Ifthey are distinct,
restriction may be proper. If they are not distinct,
restriction is never proper. If nondistinct
inventions are claimed in separate applications or patents,
double patenting must beheld, except where the
August 2001 800-42
additional applications were filed consonant with a
requirement to restrict in a national application.
The various pairs of related inventions are noted in
the following sections.
806.05(a) Combination and
Subcombinatiol1 or Element
A combination is an organization of which a subcombination
or element is a part.
Relative to questions of restriction where a combination
is alleged, the claim thereto must.be assumed
to be allowable (novel and unobvious) as pointed out
in MPEP § 806.02, in the absence of a holding by the
examiner to .the contrary. When a claim is found in a
patent, it has already been found by the Office to be
allowable and must be treated on that basis.
806.05(b) Old Combination - Novel
Subcombination
Restriction is ordinarily not proper between a combination
(AB) that the examiner holds to be old and
unpatentable and the subcombination (B) in which the
examiner holds the novelty, ifany, to reside.' Ex parte
Donnell, 1923 C.D. 54, 3l50.G. 398 (Comm'r
Pat.l923). See MPEP § 820m.
806.05(c) Criteria of Distinctness for
Combination, Subcombination,
or Element ofa Combination
In order to establish that combination and subcombination
inventions are distinct, two-way distinctness
must be demonstrated.
To support a requirement for restriction, both twoway
distinctness and reasons for insisting on restriction
are necessary, i.e., separate classification, status,
or field of search. See MPEP § 808.02.
The inventions are distinct if it can be shown that a
combination as claimed:
(A) does not require the particulars of the subcombination
as claimed for patentability (to show
novelty and unobviousness), and

RESTRICTION IN APPLICAnON FILED UNDER 35U.S.c. 111; DOUBLE PATENTING
(B) the subcombination can be shown to have
utility either by itself or in other and different relations.
When these factors cannot be shown, such inventions
are not distinct.
The following examples are included for general
guidance.
I. SUBCOMBINATION NOT ESSENTIAL
TO COMBINATION
AB biB sp Restriction Proper
Where a combination as claimed does not set forth
the details of the subcombination as separately
claimed and the subcombination has separate utility,
the inventions are distinct and restriction is proper if
reasons exist for insisting upon the restriction; i.e.,
separate classification, status, or field of search.
This situation can be diagramed as combination
ABbr ("br" is an abbreviation for "broad"), and subcombination
Bsp ("sp" is an abbreviation for "specific").
Bbr indicates that in the combination the
subcombination is broadly recited. and that the specific
characteristics set forth in the subcombination
claim Bsp are not set forth in the combination claim.
Since claims to both the subcombination and combination
are presented and assumed to be patentable,
the omission of details of the claimed subcombination
Bsp in the combination claim ABbr is evidence that the
patentability of the combination does not rely on the
details of the specific subcombination.
II. SUBCOMBINATION ESSENTIAL TO
COMBINATION
AB sIB sp No Restriction
If there is no evidence that combination AB sp is
patentable without the details of B sp ' restriction
should not be required. Where the relationship
between the claims is such that the separately claimed
subcombination B sp constitutes the essential distinguishing
feature of the combination AB sp as claimed,
the inventions are not distinct and a requirement for
restriction must not be made, even though the subcombination
has separate utility.
806.05(c)
m. SOME COMBINATION CLAIMS RECITE
SPECIFIC FEATURES OF THE SUB­
COMBINATION BUT OTHER COMBINA·
TION CLAIMS GIVE EVIDENCE THAT
THE SUBCOMBINATION IS NOT ESSEN­
TIAL TO THE COMBINATION.
AB slAB br (Evidence Claim)/B sp Restriction
Proper
Claim AB br is an evidence claim which indicates
that the combination does not rely upon the specific
details of the subcombination for its patentability. If
claim AB br is subsequently found to be unallowable,
the question of rejoinder of the inventions restricted
must be considered and the letter to the applicant
should so state. Therefore, where the combination evidence
claim AB br does not set forth the details of the
subcombination B sp and the subcombination B sp has
separate utility, the inventions are distinctand restriction
is proper if reasons exist for insisting upon the
restriction.
In applications claiming plural inventions capable
of being viewed as related in two ways, for example,
as both combination-subcombination and also as different
statutory categories, both applicable criteria for
distinctness must be demonstrated to support a restriction
requirement. See also MPEP § 806.04(b).
Form paragraph 8.15 may be used in combinationsubcombination
restriction requirements.
'I 8.15 Combination-Subcombination
Inventions [1] and [2] are related as combination and subcombination.
Inventions in this relationship are distinct if it can
be shown that (1) the combination as claimed does not require the
particulars of the subcombination as claimed for patentability, and
(2) that the subcombination has utility by itself or in other combinations
(MPEP § 806.05(c)). In the instant case, the combination
as claimed does not require the particulars of the subcombiriation
as claimed because [3l The subcombination has separate utility
such as [4].
Examiner Note:
1. This form paragraph is to be used when claims are presented
ro both combination(s) and snbcombination(s) (MPEP §
806.05(c».
2. In situations involving evidence claims, see MPEP §
806.05(c); example 3, and explain in bracket 3,
3. In bracket 4, suggest utility other than used in the combination.
4. Conclude restriction requirement with one of form paragraphs
8.21.01 through 8.21.03.
800-43 August 2001

...._-_......_.._---
RESTRICTION IN APPLICATION FILED UNDER 35 U.S.c. 111; DOUBLE PATENTING
Form paragraph 8.20.01 may be used in product,
process of making and process of using situations
where the product is not allowable.
'f{ 8.20.0i Product, Process of Making and Process of
Using-Product Not Allowable
Inventions [1] and [2] are related as process of making and
process of using the product. The use 'as claimed cannot be practiced
with a materially different product. Since the product is not
allowable, restriction is proper between said method of making
and method of using. The product claim will be examined along
with the elected invention (MPEP § 806.05(i)).
Examiner Note:
This form paragraph is to be used when claims'are presented to
the product, process ofmaking and process ofusing where the
product claim(s) are not allowable (MPEP § 806.05(i)).
807 Patentability Report Practice Has
No Effect on Restriction Practice
Patentability report practice (MPEP §705), has no
effect upon, and does not modify in any way,the practice
of restriction, being designed merely to facilitate
the handling of cases in which restriction cannot properly
be required.
808 Reasons for Insisting Upon
Restriction
Every requirement to restrict has two aspects:
(A) the reasons (as distinguished from the mere statement
of conclusion) why the inventions as claimed
are either independent or distinct; and (B) the reasons
for insisting upon restriction therebetween as set forth
in the following sections.
808.oI
Independent Inventions
Where the inventions claimed are independent, i.e.,
where they are not connected in design, operation, or
effect under the disclosure of the particular application
under consideration (MPEP § 806.04), the facts
relied on for this conclusion are in essence the reasons
for insisting upon restriction. This situation,
except for species, is but rarely presented, since persons
will seldom file an application containing disclosures
of independent things.
808.01(a)
Form paragraph 8.20.02 may be used when claims
are directed to independent, unrelated inventions.
'f{ 8.20.02 Unrelated inventions
Inventions [1] and [2]· are unrelated. Inventions are unrelated
if it can be shown that they are notdisclosed as capable of
use together and they have different modes of operation, different
functions, or different effects. (MPEP § 806.04, MPEP §
808.01). In the instant case the different inventions [3].
Examiner Note:
1. This form paragraph is to be used only when claims are presented
to unrelated inventions, e. g., a necktie and a locomotive
bearing.
L In bracket 3, insert reasons for concluding that the inventions
are unrelated.
808.01(a) Species
Where there is no disclosure of relationship
between species (see MPEP § 806.04(b)), they are
independent inventions and election of one invention
following a requirement for restriction is mandatory
even though applicant disagrees with the examiner.
There must be a patentable difference between the
species as claimed. See MPEP § 806.04(h). Since the
claims are directed to independent inventions, restriction
is proper pursuant to 35 U.S.C. 121, and it is not
necessary to show a separate status in the art or separate
classification,
A single disclosed species must be elected as a pre"
requisite to applying the provisions of 37 CFR 1.141
to additional species if a generic claim is allowed.
Even if the examiner rejects the generic claims, and
even if the applicant cancels the sameand admits that
the genus is unpatentable, where there is a relationship
disclosed between species, such disclosed relation
must be discussed and reasons advanced leading
to the conclusion that the disclosed relation does not
prevent restriction, in order to establish the propriety
of restriction.
Election of species should not be required if the
species claimed are considered clearly unpatentable
(obvious) over each other. In making a require"
ment for restriction in an application claiming plural
species, the examiner should group together species
considered clearly unpatentable over each other, with
the statement that restriction as between those species
is not required.
Election of species should be required prior to a
search on the merits (A) in all applications containing
claims to a plurality of species with no generic claims;
800047 August 2001

810.02 MANUAL OF PATENT EXAMlNlNG PROCEDURE
restriction or election is accompanied by a complete
action on the merits of all the claims, such action will
be considered to be an action on the merits and the
next action by the examiner should be made final.
When preparing a final action in an application wbere
applicant has traversed the restriction requirement,
see MPEP § 821.01.
Although an action on the merits is not necessary to
a requirement, it is not objectionable. Ex parte
Lantzke, 1910 C.D. 100, 156 O.G. 257.(Comm'r Pat.
1910). However, note that a question may arise as to
whether there is a serious burden on the examiner.
However, except as noted in ,MPEP § 809 and
§ 812.01, if an action is given on the merits, it must be
given on all claims.
810.02
The Office policy is to usually defer action on the
merits. until after the. requirement for restriction is
complied with, or withdrawn. Ex parte Pickles; 1904
C.D. 126, 109 O.G. 1888 (Comm'r Pat. 1904);
Exparte Snyder, 1904 C.D. 242, 110 O.G. 2636
(Comm'r Pat. 1904); and Exparte Weston, 1911 C.D.
218, 173 O.G. 285 (Comm'r Pat. 1911).
810.03
Usually Deferred
Given on Elected Invention
When Requirement Is Made
Final
37 CFR 1.143 last sentence states: "[i]f the requirement
is repeated and made final, the examiner will at
the same time act on the claims to the invention
elected." Thus, action is ordinarily given on the
elected invention in the action making the requirement
final.
811 Time for Making Requirement
37 CFR 1.I42(a), second sentence states: "[i]f the
distinctness and independence of the invention be
clear, such requirement will be made before any
action upon the merits; however, it may be made at
any time before final action in the case at the discretion
of the examiner." This means the examiner
should make a proper requirement as early
as possible in the prosecution, in the first action if
possible; otherwise, as soon as the need for a proper
requirement develops.
August 2001 800-54
Before making a restriction requirement after the
first action on the merits, the examiner will consider
whether there will be a serious burden if restriction is
not required.
811.02 Even After Compliance With
Preceding Requirement
Since 37 CPR 1.I42(a) provides that restriction is
proper at any stage of prosecution up to final action, a
second requirement may be made when it becomes
proper, even though there was a prior requirement
with which applicant complied. Ex parte Benke, 1904
C.D. 63, 108 O.G. 1588 (Comm'r Pat. 1904).
811.03
811.04
Repeating After Withdrawal
Proper
Where a requirement to restrict is made and withdrawn,
because it was improper, when it becomes
. proper at a later stage in the prosecution, restriction
may again be required.
Proper Even Though Grouped
Together in Parent Application
Even though inventions are grouped together in a
requirement in a parent application, restriction or
election among the inventions may be required in the
divisional applications, if proper.
812 Who Should Make the
Requirement
The requirement should be made by an examiner
who would examine at least one of the inventions.
An examiner should not require restriction in an
application if none of the claimed subject matter is
classifiable in his or her Technology Center. Such an
application should be transferred to a Technology
Center to which at least some of the subject matter
belongs.
812.01 Telephone Restriction Practice
If an examiner determines that a requirement for
restriction should be made in an application, the
examiner should formulate a draft of such restriction
requirement including an indication of those claims
considered to be .linking or generic. No search
or rejection of the linking claims should be made.

814 MANUAL OF PATENT EXAMlNING PROCEDURE
814 Indicate Exactly How Application
Is To Be Restricted
SPECIES
The mode of indicating how to require restriction
between species is set forth in MPEP § 809.02(a).
As pointed out in Ex parte Ljungstrom, 1905 C.D.
541, 1190.0. 2335 (Comm'r Pat. 1905), the particular
limitations in the claims and the reasons why such
limitations are considered to restrict the claims to a
particular disclosed species should be mentioned if
necessary to make the requirement clear.
INVENTIONS OTHER THANSPECIES
It is necessary to read all of the claims in order to
determine what the claims cover. When doing this, the
claims directed to each separate subject should be
noted along with a statement of the subject matter to
which they are drawn.
This is the best way to most clearly and precisely
indicate to applicant how the application should be
restricted. It consists in identifying each separate subject
amongst which restriction is required, and grouping
each claim with its subject.
The separate inventions should be identified by a
grouping of the claims with a short description of the
total extent of the invention claimed in each group,
specifying the type or relationship of each group as by
stating the group is drawn to a process, or to a subcombination,
or to a product, etc., and should indicate
the classification or separate status of each group, as
for example, by class and subclass.
While every claim should be accounted for, the
omission to group a claim, or placing a claim in the
wrong group will not affect the propriety of a final
requirement where the requirement is otherwise
proper and the correct disposition of the omitted or
erroneously grouped claim is clear.
LINKING CLAIMS
'The generic or other linking claims should not be
associated with anyone of the linked inventions since
such claims must be examined with anyone of the
August 2001 800-56
linked inventions that may be elected. This fact
should be clearly stated.
815 Make Requirement Complete
When making a requirement every effort should be
made to have the requirement complete. If some of
the claimed inventions are classifiable in another art
unit and the examiner has any doubt as to the proper
line among the same, the application should be
referred to the examiner of the other art unit for information
on that point and such examiner should render
the necessary assistance.
816 Give Reasons for Holding of
Independence or Distinctness
The particular reasons relied on by the examiner for
holding that the inventions as claimed are either.independent
or distinct should be concisely stated. A mere
statement of conclusion is inadequate. The reasons
upon which the conclusion is based should be given.
For example, relative to combination and a subcombination
thereof, the examiner shonld point out
the reasons why he or she considers the subcombination
to have utility by itself or in other combinations,
and why he or she considers that the combination as
claimed does not rely on the subcombination as its
essential distinguishing part.
Each other relationship of claimed invention should
be similarly treated and the reasons for the conclusions
of distinctness of invention as claimed set forth.
The separate inventions should be identified by a
grouping of the claims with a short description of the
total extent of the invention claimed in each group,
specifying the type or relationship of each group as by
stating the group is drawn to a process, or to subcombination,
or to product, etc., and shonld indicate the
classification or separate status of each group, as for
example, by class and subclass. See MPEP § 809.
Note form paragraph 8.13.
1f 8.13 Distinctness (Heading)
The inventionsare distinct,each from the otherbecause:
Examiner Note:
This fonn paragraph should, be followed by one of form paragraphs
8.14-8.20.02 to show distinctness.

RESTRICTION IN APPLICATION FILED UNDER 35 U.S.c. Ill; DOUBLE PATENTING 817
817 Outline of Letter for Restriction
Requirement Between Distinct
Inventions
The statement in MPEP § 809.02 through
§ 809.02(d) is adequate indication of the form ofletter
when election of species is required.
No outline of a letter is given for other types of
independent inventions since they rarely occur.
The following outline of a letter for a requirement
to resttict is intended to cover every type of original
restriction requirement between related inventions
including those having linking claiIns.
OUTLINE OF LETTER
(A) Statement of the requirement to resttict and
that it is being made under 35 U.S.C. 121
(1) Identify each group by Roman numeral.
(2) List claims in each group. Check accuracy
of numbering of the claims; look for same claims in
two groups; and look for omitted claims.
.(3). Give short description of total extent of the
subject matter claimed in each group, pointing out
critical claims of different scope and identifying
whether the claims are directed toacombination, subcombination,
process; apparatus, or product.
(4) Classify each group.
Form paragraphs 8.08-8.11 should bensed to group
inventions.
'Jl 8.08 Restriction, Two Groupings
Restriction toone of the following inventions is required under
35 U.S.C. 121:
I.Claim [1], drawn to [2], classified in class [31, subclass
[4].
II.Claim [5], drawn to [6], classified in class [7], subclass [8].
'Jl 8.09 Restriction, 3rd Grouping
III.Claim [11, drawn to [2], classified in class [3], subclass
[4].
'Jl 8.10 Restriction, 4th Grouping
IV.Claim [1], drawn to [21, classified in class [31, subclass
[4].
'Jl 8.11 Restriction, Additional Groupings
[1].Claim[2], drawn to [3], classified in class [4], subclass [5].
Examiner Note:
Inbracket I, insert theappropriate roman numeral, e.g., -.;.V--;­
-VI--, etc.
(B) Take into account claims not grouped, indicating
their disposition.
(1) Linking claims
(i) Indicate (make no action)
(ii) Statement of groups to which linking
claims may be assigned for examination
(2) Other ungrouped claims
(3) Indicate disposition, e.g., previously non,
elected, nonstatutory, canceled, etc.
(C) Allegation of distinctuess
(1) Point out facts which show distinctness
(2) Treat the inventions as claimed, don't
merely state the conclusion that inventions in fact are
distinct
(i) Subcombination - Subcombination disclosed
as usable together
Each usable alone or in other identified combination
Demonstrate by examiner's suggestion
(ii) .Combination c Subcombination
Combination as claimed does not require
subcombination
AND
Subcombination .usable alone or in other
combination
Demonstrate by examiner's suggestion
(iii) Process - Apparatus
Process can be carried out by hand or by
other apparatus
Demonstrate by examiner's suggestion
OR
Demonstrate apparatus can be used in .other
process (rare).
(iv) Process of making and/or Apparatus for
making - Product made
Claimed product can be made by other process
(or apparatus)
Demonstrate by examiner's suggestion
OR
Demonstrate process of making (or apparatus
for making) can produce other product (rare)
(DjProvide reasons for insisting upon resttiction
(1) Separate status in the art
(2) Different classification
(3) Same classification but recoguition of
divergentsubjectrnatter
800-57 August2001

818 MANUAL OF PATENT EXAMINING PROCEDURE
(4) Divergent fields of search, or
(5) Search required for one group not required
for the other
(E) Summary statement
(1) Summarize (i) distinctness and (ii) reasons
for insisting upon restriction, if applicable
(2) Include paragraph advising as to reply
required.
(3) Indicate effect of allowances of linking
claims, if any present
(4) Indicate effect of cancellation or nonallowante
of evidence claims (see MPEP § 806.05(c»
One of form paragraphs 8.21.01 through 8.21.03
must be used at the conclusion of each restriction
requirement.
'f{8.2I.OI Conclusion to All Restriction Requirements:
Different Classification
Because these inventions are distinct for the reasons given
above and have acquired a separate status in the art as shown by
their different classification, restriction for examination purposes
as indicated is proper.
Examiner Note:
THIS FORM PARAGRAPH (OR ONE OF FORM PARA­
GRAPHS 8.21.02 OR 8.21.03) MUST BE ADDED AS A CON_
CLUSION TO ALL RESTRICTION REQUIREMENTS
employing any ofform paragraphs 8.14 to 8.20.02.
'f{ 8.21.02 Conclusion to All Restriction Requirements:
Recognized Divergent Subject Matter
Because these. inventions are distinct for the. reasons given
above and have acquired a separate status in the art because of
their recognized divergent subject matter, restriction for examinationpurposes
as indicated-is proper.
Examiner Note:
THIS FORM PARAGRAPH (OR ONE OF FORM PARA­
GRAPHS 8.21.01 OR 8.21.03) MUST BE ADDED AS A CON­
CLUSION TO ALL RESTRICTION REQUIREMENTS
employing any of form paragraphs 8.14 to 8.20.02.
'f{ 8.21.03 Conclusion to All Restriction Requirements:
Different Search
Because these inventions are distinct for the reasons given
above and the search required for Group [1] is not required for
Group [2], restriction for examination purposes as indicated is
proper.
Examiner Note:
THIS FORM PARAGRAPH (OR ONE OF FORM PARA­
GRAPHS 8.21.01 OR 8.21.02) MUST BE ADDED AS A CON-
August2001 800-58
CLUSION TO ALL RESTRICTION REQUIREMENTS
employing any of form paragraphs 8.14 to 8.20.02.
Form paragraph 8.23.02 must be included in all
restriction requirements for applications having joint
inventors.
'f{ 8.23.02 Joint Inventors, Correction ofInventorship
Applicant is reminded that upon the cancellation of claims to a
non-elected invention, the inventorship mustbe aniended in compliance
with 37 CFR 1.48(b) if one or more of the currently
named inventors is no longer an inventor of at least one claim
remaining in the application. Any amendment of inventorship
must be accompanied by a request under 37 CFR 1.48(b) and by
thefee required under 37 CPR 1.17(i).
Examiner Note:
This form paragraph must be included in all restriction requirements
for applications having joint inventors.
818 Election and Reply
Election is the designation of the particular one of
two or more disclosed inventions that will be prosecuted
in the application.
A reply should be made to each point raised by the
examiner's action, and may include a traverse or compliance..
A traverse of a requirement to restrict is a statement
of the reasons upon which the applicant relies for his
or her conclusion that the requirement is in error.
To be complete, a reply to a requirement which
merely specifies the linking claims need only include
a proper election.
Where a rejection or objection is included with a
restriction requirement, applicant, besides making a
proper election must also distinctly and specifically
point out the supposed errors in the examiner's rejection
or objection. See 37 CPR 1.111.
818.01
Election becomes fixed when the claims in an
application have.received an action on their merits by
the Office.
818.02
Election Fixed by Action on
Claims
Election Other Than Express
Election may be made in other ways than expressly
in reply to a requirement as set forth in MPEP
§ 818.02(a) and § 818.02(c).

SlS;03(c) MANUAL OFPATENT EXAMINING PROCEDURE
818.03(c) Must Traverse To
Preserve Right of Petition
37 CFR 1.144. Petition from requirement for restriction.
Aftera final requirement for restriction, the applicant, in additionto
making anyreplydue on theremainder of the action, may
petition the Commissioner to review the requirement. Petition
maybe deferred untilafterfinalaction on or allowance of claims
to the invention elected, but mustbe filed not laterthan appeal. A
petition will notbe consideredif reconsideration of the requirement
was not requested (see § 1.181).
If applicant does not distinctly and specifically
point out supposed errors in the restriction requirement,
the election should be treated as an election
without traverse and be so indicated to the applicant
by use of form paragraph 8.25.02.
'f[ 8.25.02 Election Without Traverse Based on 1ncomplete
Reply
Applicant's election of [11 in Paper No. [21 is ackllowledged.
Becauseapplicant did not distinctly and specifically pointout the
supposed errors in the restriction requirement, the election has
been treated as an election without traverse (MPEP § 818.03(a)).
818.03(d) Traverse of Nonallowance
of Linking Claims
A traverse of the nonallowance of the linking
claims is not a traverse of the requirement to restrict;
it is atraverse of a holding of nonallowance.
Election combined with a traverse of the nonallowanceof
the linking claims only is an agreement with
the position taken by the Office that restriction is
proper if the linking-type claim is not allowable and
improper if they are allowable. If the Office allows
such a claim, it is bound to withdraw the requirement
and to act on all linked inventions. But once all linking
claims are canceled 37 CFR 1.144 would not
apply, since the record would be one of agreement as
to the propriety of restriction.
Where, however, there is a traverse on the ground
that there issome relationship (other than and in addition
to the linking-type claim) that also prevents
restriction, the merits of the requirement are contested
and not admitted. Assume a particular situation of
process of makingandproduct madewherethe claim
held linking is a claim to product limited by the process
of making it. The traverse may set forth particnlar
reasons jnstifying the conclusion that restriction is
improper where the process necessarily makes the
product and there is no other present known process
August2001
800-60
by which the product can be made. If restriction is
made final in spite of such traverse, the right to petitiou
is preserved even thongh all linking claims are
canceled.
818.03(e) ApplicantMust
Make Own Election
Applicant must make his or her own election. The
examiner will not make the election for the applicant.
37 CFR 1.142, 37 CFR 1.143, second sentence.
819 Office Generally Does
Not Permit Shift
The general policy of the Office is not to permit the
applicant to shift to claiming another invention after
an election is once made and action given on the
elected subject matter. Note that the applicant cannot,
as a matter of right, file a request for continued examination
(RCE) to obtain continued examination on the
basis of claims that are independent and distinct from
the claims previously claimed and examined (i.e.,
applicant cannot switch inventions by way of an RCE
as a matter of right). When claims are presented
which.the examiner holds are drawn to an invention
other than the one elected, he or she should treat the
claims as outlined in MPEP § 821.03.
Where the inventions are distinct and of such a
nature that the Office compels restriction, an election
is not waived even though the examiner gives action
upon the patentability of the claims to the nonelected
invention. Ex parte Loewenbach, 1904 C.D. 170,
1100.G 857 (Comm'r Pat. 1904) and In re Waugh,
135 F.2d 627, 57 USPQ 371 (CCPA 1943).
Where a continued prosecution application (CPA)
filed under 37 CFR 1.53(d), is a continuation of its
parent application and not a divisional, or where a File
Wrapper Continuation (FWC) filed under former
37 CFR 1.62, is a continnationof its parent application
and not a divisional or C-I-P, an express election
made in the prior (parent) application in reply to a
restriction requirement carries over to the CPA or
FWC application unless otherwise indicated by applicant.
In no other type of continning application may
an election carry over from the prior application.
Where there is no indication in the CPA or FWC
application that a change in election is desired, the
examiner's first action should include a repetition of

RESTRICTION IN APPLICATION FILEDUNDER 35US.C. 111;DOUBLE PATENTING ." 821
the restriction requirement made in the prior application
to the extent it is still applicable in the CPA or
FWC application and a statement that prosecution is
being continued on the invention elected and prosecuted
by applicant in the prior application. Examples
of what is meant by the phrase. "otherwise indicated
by applicant" would be where the CPA or FWC is
filed as (A) a divisional or (B) a continuation and
includes an amendment filed prior to fitst action inthe
CPA or FWC adding claitns to an invention not previously
elected. In each of these examples the examiner
should make a new restriction requirement in the first
action.
819.01
Office May Waive Election
and Permit Shift
While applicant, as a matter of right, may not shift
from clainting one invention toclainting another, the
Qfficeis not precluded from perntitting a shift. It may
do so where the shift results in no additional work or
expense, and particnlarly where the. shift. reduces
work "s by simplifying the issues. Ex parte Heritage,
P"t. No. 2,375,414 decided January 26, 1944. If the
examiner has accepted':a shift from claiming one
invention to clainting another, the case is not abandoned.
Meden v. Curtis, 1905 C.D.272, 117 O.G. 1795
(Comm'r P"t. 1905).
820 Not an Election; Permissible Shift
Where the Office rejects on the ground that the process
is obvious, the only invention being in the product
made, presenting claims to the product is not a
shift: Ex parte Trevette, 1901 CD. 170, 97 O.G. 1173
(Comm'r P"1.1901).
Where" product is elected, there is no shift where
examiner holds invention to be in the proeess.: Ex
parte Grier, 1923 C.D. 27, 309 O.G. 223 (Comm'r
P"t. 1923).
Where a genus is allowed, applicant'mayprosecute
a reasonable number of additional species thereunder,
in accordance with 37 CFR 1.141. This does not constitute
"shift. Ex parte Sharp, Patent No. 2,232,739.
820.01
Old Combination Claimed
- Not an Election
Where an application originally prespnts claims toa
combination (AB) and the examiner holds the novelty,
if any. to rcside only in the subcombination (B) per se
(see MPEP§ 806.05(b», and the claims directed to
the combination are rejected, subsequently presented
claims to subcornbination (B) of the originally
claitned combinatlon should not be held construetively
nonelected on the ground of previous election
of the combination. See MPEP § 821.03. Ex parte
Donnell, 1923 C.D. 54, 315 O.G. 398 (Comm'r P"t.
1923). The combination and subcombination as
defined by the claims under this special situation are
not for distinct inventions. See MPEP § 806.05(c).
820.02
Interference Issues ­
Not an Election
Where an interference is instituted prior to an applicant's
election, the subject matter of the interference
issues is not elected. An applicant may, after the termination
of the interference, elect anyone of the
inventions claimed.
821 Treatment of Claims Held To Be
Drawn to Nonelected Inventions
Claims held to be drawn to nonelected inventions,
including claims to nonelected species, are treated "S
indicated in MPEP § 821.01 through § 821.03.
The propriety of a requirement to restrict, if traversed,
is reviewable by petition under 37CFR 1.144.
In re Hengehold, 440 F.2d 1395, 169 USPQ 473
(CCPA 1971).
All claims that the examiner holds as not being
directed to the elected subject matter are withdrawn
from further consideration by the examiner in accordance
with 37 CFR1.142(b). See MPEP § 809.02(c)
and § 821.D1 through § 821.03. The examiner should
clearly set forth in the Office action the reasons why
the claitns withdrawn from consideration are not readable
on the elected invention. Applicantmay traverse
the requirement pursuanU037CFR 1.143. If" final
requitement for restriction is made by theexaminer,
applicant may file" petition under 37 CFR 1.144 for
review of the restriction requitement.
800-61 August2001

821.01 MANUAL OF PATENTEXAMININGPROCEDURE
821.01 After Election With Traverse restriction, the examiner should indicate in the Office
Where the initial requirement is traversed, it should
be reconsidered. If, upon reconsideration, the examiner
is still of the opinion that restriction is proper, it
should be repeated and made final in the next Office
action. (See MPEP § 803.Dl.) In doing so, the examiner
should reply to the reasons or arguments
advanced by applicant in the traverse. Form paragraph
8.25 should be used to make a restriction requirement
final.
'!! 8.25 Answer to Arguments With Traverse
Applicant's election with traverse of [1] in Paper No. [2] is
acknowledged. The traversal is on the ground(s) that [3]. This is
not found persuasive because [4].
The requirement is still deemed proper and is therefore made
FINAL.
Examiner Note:
1. In bracket 1, insert the invention elected.
2. In bracket 3, insert in summary form, the ground(s) on which
traversal is based.
3. In' bracket 4, -insert the reasons why the traversal'was' not
foundto be persuasive.
If the examiner, upon reconsideration, is of the
opnuon that the requirement for restriction is
improper, he or she should state in the next Office
action that the requirement for restriction is withdrawn
and give an action on all the claims.
If the requirement is repeated and made final, in
that and in each subsequent action, the claims to the
nonelected invention should be treated by using form
paragraph 8.05.
'!! 8.05 Claims Stand Withdrawn With Traverse
Claim [1] withdrawn from further consideration pursuant to 37
CPR 1.142(b), as being drawn to a nonelected [2], there being no
(allowable) generic or linking Claim. Applicant timely traversed
the restriction (election) requirement in Paper No. [3].
Examiner Note:
In bracket 2, insert --invention-- or -epecies-.
This will show that applicant has retained the right
to petition from the requirement under 37 CPR 1.144.
(See MPEP § 8l8.03(c).)
When the case is otherwise ready for issue, aud has
not received a final action, the examiner should treat
the case by usiug form paragraph 8.03. (See MPEP
§ 809.02(c».
When preparing a final action in an application
where there has been a traversal of a requirement for
August2001 800-62
action that a complete reply must include cancellation
of the claims drawn to the nonelected invention, or
other appropriate action (37 CPR 1.144). See form
paragraph 8.24.
'!! 8.24 Reply to Final Must Include Cancellation
This application contains claim [1] drawn to an invention nonelected
with traverse in Paper No. [2]. A complete reply to the
final rejection must.include cancelation of. nonelected claims or
other appropriate action (37 CPR 1.144).See MPEP § 821.01.
Examiner Note:
For use in FINAL rejections of applications containing claims
nonelected with traverse.
Where a reply to a final action has otherwise placed
the application in condition for allowance, the failure
to cancel claims drawn to the nonelected invention or
to take appropriate action will be construed as authorization
to cancel these claims by examiner's amendment
and pass the application to issue after the
expiration of the period for reply.
Note that the petition under 37 CFR 1.144 must be
filed not later than appeal. This is construed to mean
appeal to the Board of Patent Appeals and Interferences.
If the application is ready for allowance after
appeal and no petition has been filed, the examiner
should simply cancel the nonelected claims by examiner's
amendment, calling attention to the provisions
of 37 CFR 1.144.
821.02 After Election Without Traverse
Where the initial requirement is not traversed, if
adhered to, appropriate action should be given on the
elected claims. Form paragraphs 8.25.01 or 8.25.02
should be used by the examiner to acknowledge the
election without traverse.
'!! 8.25.OJ Election Without Traverse
Applicant's election without traverse of [IHo Paper No. [2] is
acknowledged.
'!! 8.25.02 Election Without Traverse Based on Incomplete
Reply
Applicant's election of [1] in Paper No. [2] is acknowledged.
Because applicant did not distinctly and specifically point out the
supposed errors -in the restriction requirement.. the election has
been treated as an election withont traverse (MPEP § 818.03(a».
Claims to the nonelected invention should be
treated by using form paragraph 8.06.

RESTRICTION IN APPLICATION FILED UNDER35 U.S.C. 111; DOUBLE PATENTING 821.04
'f{ 8.06 Claims Stand Withdrawn Without Traverse
Claim [1] withdrawn from further consideration pursuant to
37 CFR 1.142(b) as being drawn to a nonelected [2], there being
no allowable genericor linking claim. Election-was made.wlthout
traverse in Paper No. [3J.
Examiner Note:
In bracket 2, insert --invenHon--, or --species--.
This will show that applicant has not retained the
right to petition from the requirement under 37 CPR
1.144.
Under these circumstances, when the application is
otherwise ready for issue, the claims to the nonelected
invention, including nonelected species, may be c!illceled
by an examiner's amendment, and the application
passed to issue. However, where the application
contains an allowed generic claim, and applicant has
not been previously notified as to the allowance of a
generic claim, the examiner must, prior to canceling
the nonelected claims, notify applicant of the allowance
of a generic claim and give applicant a time limit
of I-month (not less than 30 days) to conform all of
the claims to the nonelected species to fully embrace
an allowed generic claim. See MPEP § 809.02(c), The
examiner's amendment should include form paragraph
8,07.
'f{ 8.07 Readyfor Allowance Without Traverse
This application is' in condition for allowance -except for the
presence of claim [1] to [2]nonelected without traverse. Accordingly,
claim [31 been canceled.
Examiner Note:
In bracket 2, insert --an invention-c.--inventions--, TT,a species­
-, or --species--.
821.03 Claims for Different Invention
Added After an Office Action
Claims added by amendment following action by
the examiner, MPEP § 818.Ql, § 818.02(a), to an
invention other than previously claimed, should be
treated as indicated by 37 CFR 1.145.
37 CFR 1.145. Subsequent presentation of claims for
different invention.
If; after an office .action on an application, ·the applicant presents
claims directed to an.invention distinct fromand.indepen..
dent of the invention previously claimed, the applicant will be
required to restrict the claims to the invention previously claimed
ifthe amendment is entered, subject to reconsideration andreview
as provided.in §§ 1.143 and 1.144
The action should include form paragraph 8.04.
'f{ 8.04 Election by Original Presentation
Newly submitted-claim [1] directed to. an invention that is
independent or distinct from the invention originally claimed for
the following reasons: [2]
Since' applicant has received ali action OIl the merits for the
originally presented invention, this invention has 'been constructively
elected by original presentationfor prosecution on the merits.
Accordingly. claim [3] withdrawn from consideration as
being directed to a non-elected invention.. See 37 CPR. 1.142(b)
and MPEP § 821.03.
Of course, a complete action on all claims to the
elected invention should be given.
Note that the above practice is intended to have no
effect on the practice stated in MPEP § 2303,
An amendment canceling all claims drawn to the
elected invention and presenting only claims drawn to
the nonelected invention should not be entered. Such
an amendment is nonresponsive. Applicant should be
notified by using form paragraph 8,26,
'f{ 8.26 Canceled Elected Claims, Non-Responsive
The amendment filed on [1] canceling all claims drawn to the
elected invention and presenting only claims drawn: to a nonelected
invention is non-responsive (MPEP § 821.03). The
remaining claims are not readable on the elected invention
becanse [2].
Since the above-mentioned' amendment appearsto be -a bona
fide attempt to reply, applicant is given a TIME PERIOD ofONE
(I) MONTH or THIRTY (30) DAYS, whicheverIs longer.from
the mailing date ofthis notice withinwhich to supply the omission
or correction in order to avoid abandonment. EXTENSIONS OF
TIllS TIME PERIOD UNDER 37 CFR 1.136(a)ARE AVAIL­
ABLE.
821.04 Rejoinder
Where product and process claims drawn to independent
and distinct inventions are presented in the
same application; applicant may be called upon Ulider
35 U.S.c. 121 to elect claims to either the product or
process, See MPEP § 806,05(1) and § 806.05(h). The
claims to the tlonelected invention will be withdrawn
fromfurther consideration under 37 CFR 1.142, See
MPEP §809.02(c) and § 82lthrough § 821.03. However,
if applicant elects claims directed to the product,
and a product claim is subsequently found allowable,
withdrawn process claims which depend from or otherwise
include all the limitations of the allowable
product claim will be rejoined.
800c63 August 2001

821;04 MANUAL OF PATENT EXAMINING PROCEDURE
Where the application as originally filed discloses
the product and the process for making and/or USing
the product, and only claims directed to the product
are presented for examination, when a product claim
is found allowable, applicant may present claims
directed to the process of making and/or using the patentable
product by way of amendment pursuant to
37 CFR 1.121. In view ofthe rejoinder procedure, and
in order to expedite prosecution, applicants are
encouraged to present such process claims, preferably
as dependent claims, in the application at an early
stage of prosecution. Process claims which depend
from or otherwise include all the limitations of the
patentable product will be entered as a matter of right
if the amendment is presented prior to final rejection
or allowance. Amendments submitted after final
rejection are governed by 37 CPR 1.116. Process
claims which do not depend from or otherwise
include the limitations of the patentable product will
be withdrawn from consideration, via an election by
original presentation (see MPEP § 821.03). Amendments
submitted after allowance are governed by
37 CPR 1.312. Process claims which depend from or
otherwise include all the limitations of an allowed
product claim and which meet the requirements of
35 U.S.C. 101, 102, 103, and 112 may be entered.
Where applicant voluntarily presents claims to the
product and process in separate applications (i.e., no
restriction requirement was made by the Office), and
oneof the applications issuesas a patent, the remaining
application may be rejected under the doctrine of
obviousness-type double patenting, where appropriate
(see MPEP § 804 - § 804.03), and applicant may
overcome the rejection by the filing of a terminal disclaimer
under 37 CFR 1.321(c) where appropriate.
Similarly, if copending applications separately present
product and process claims, provisional obviousnesstype
double patenting rejections should be made
where appropriate. However, once a determination as
to the patentability of the product has been reached
any process claim which contains limitations identical
to the allowed/allowable product should not be
rejected over prior art without consultation with a
Technology Center Director.
Where product and process claims are presented in
a single application and that application qualifies
under the transitional restriction practice pursuant to
37 CPR 1.I29(b), applicant may either: (A) elect the
August 2001
800-64
invention to be searched and examined and pay
thefee set forth in 37 CFR 1.I7(s) and have the additional
inventions searched and examined under
37 CFR 1.I29(b)(2); or (B) elect the invention to be
searched and examined and not pay the additional fee
(37 CFR 1.I29(b)(3». Where no additional fee is
paid, if the elected invention is directed to the product
and the claims directed to the product are subsequently
found patentable, process claims which either
depend from or include all the limitations of the
allowable product will be rejoined. If applicant
chooses to pay the fees to have the additional inventions
searched and examined pursuant to 37 CPR
1.I29(b)(2) even if the product is found allowable,
applicant would not be entitled to a refund of the fees
paid under 37 CFR 1.129(b) by arguing that the process
claims could have beenrejoined. 37 CFR 1.26(a)
states that "[T]he Commissioner may refund any fee
paid by mistake or in excess of that required. A
change of purpose after the payment of a fee...will not
entitle a party to a refund of such fee..." In this case,
the fees paid under 37 CPR 1.I29(b) were not paid by
mistake nor paid in excess, therefore, applicant would
not be entitled to a refund.
In the event of rejoinder, the rejoined process
claims will be fully examined for patentability in
accordance with 37 CPR 1.104. Thus, to be allowable,
the rejoined claims must meet all criteria for patentability
including the requirements of 35 U.S.c. 101,
102, 103, and 112. If the application containing the
rejoined claims is not in condition for allowance, the
subsequent Office action may be made final, or, if the
application was already under final rejection, the next
Office action may be an advisory action.
Form paragraphs 8.42 through 8.44 should be used
to notify applicant of the rejoinder of process claims
which depend from or otherwise include all the limitations
of an allowable product claim.
'f[ 8.42Rejoinder ofLess Than All Process Claims
Claim [1] directed to an allowable product. Pursuant to the
procedures set forthin the Official Gazette notice datedMarch26,
1996 (1184 0.0. 86), claim [21, directed to the process ofmaking
or using the patentable product, previously withdrawn from consideration
as aresult of a restriction requirement, [3] now subject
to being rejoined. Process claim [4] hereby rejoined and fully
examined for patentability under 37 CFR 1.104. In accordance
with the Official Gazette notice, supra, process claim [51. which
[6] notdepend.fromor otherwise include all the limitations ofthe
allowable product, [7] NOT been rejoined.

822.Q1 . MANUAL OF PATENT EXAMINING PROCEDURE
See MPEP § 804.03for conflicting subject matter,
different inventors, common ownership.
See MPEP § 706.03(k) for rejection of one .claim
on another in the same application.
See MPEP § 706.03(w) and § 706.07(b) for res
judicata.
See MPEP § 709.Q1 for one application in interference.
See MPEP § 806.04(h) to § 806.04(i) for species
and genus in separate applications.
Wherever appropriate, such conflicting applications
should be joined. This is particularly true, where
the two or more applications are due to, and consonant
with, a requirement to restrict which the examiner
now considers to be improper.
Form paragraph 8.29 should be used when the conflicting
claims are identical or conceded by applicant
to be not patentably distinct.
'J 8.29 Conflicting Claims, Copending Applications
Claim [1] of this application conflictwith claim [2] of Application
No. [3].37 CFR l.78(b) provides that when two or more
applications filed by the same. applicant contain conflicting
claims, elimination of such claims from all but,one application
may be required in the absence of good and sufficient reason for
their retention during pendency in more than one application.
Applicant is required to either cancel the conflicting claims from
all but one application or maintain a clear line of demarcation
between the applications. See MPEP § 822.
Examiner Note:
This paragraph is appropriate only when the conflicting claims
are patentably distinct.
822.01
CopendingBefore the Examiner
37 CFR 1.78. Claiming benefit of earlier filing date and
cross-references to other applications.
*****
(b) Where two or more applications filed by the same applicant
contain conflicting claims, elimination of. such,c,laims from
all but one application may be required in the absence of good and
sufficient reason for their retention during pendency in more than
one application.
*****
37 CFR 1.130. Affidavit or declaration to disqualify
commonly owned patent or published application as prior
art.
*****
(b) When an application or a patent under reexamination
claims an invention which is not patentably distinct from an
August2001
800-66
invention claimed in a commonly owned patent with the same or a
different inventive entity, a double patenting rejection will be
made in the application or a patent under reexamination. A judicially
created double patenting rejection may be obviated by filing
a terminal disclaimer in accordance with § 1.321(c).
*****
Where claims in one application are unpatentable
over claims of another application of the
same inventive entity (or different inventive entity
with common ownership) because they recite the
same invention, a complete examination should be
made of the claims of each application and all appropriate
rejections should be entered in each application,
including rejections based upon prior art. The claims
of each. application may also be rejected on the
grounds of provisional double patenting on the claims
of the other application whether or not any claims
avoid the prior art. Where appropriate, the same prior
art may be relied upon in each of the applications. See
also MPEP § 804.01 and § 822.
ONLY PROVISIONAL .DOUBLE PATENTING
REJECTION REMAINING IN ONE APPLI­
CATION
The "provisional" double patenting rejection
should continue to be made by the examiner in each
application as long as there are conflicting claims in
more than one application unless that "provisional"
double patenting rejection is the only rejection
remaining in one of the applications. If the "provisional"
double patenting rejection in one application
is the only rejection remaining in that application, the
examiner should then withdraw that rejection and permit
the application to issue as a patent, thereby converting
the "provisional" double patenting rejection in
the other application(s) into a donble patenting rejection
at the time theone application issnes as a patent.
See also MPEP § 804.01 and § 822.
ONLY PROVISIONAL .DOUBLE PATENTING
REJECTIONS REMAINING IN BOTH APPLI­
CATIONS
If the "provisional" donble patenting rejections in
both applications are the only rejections remaining in
those applications, the examiner should then withdraw
that rejection in one of the applications and permit
the application to issue as a patent. The examiner
should maintain the double patenting rejection in the

RESTRICTION IN APPLICATION FILED UNDER35U.S.C.l11; DOUBLE PATENTING 823
other application as a "provisional" double patenting
rejection which will be converted into a double patenting
rejection when the one application issues as a
patent.
823 Unity of Invention Under the
Patent Cooperation Treaty
See Chapter 1800 for a detailed discussion of unity
of invention under the Patent Cooperation Treaty
(PCT).
•••••••••••••••••••••••••••••
800_67 August 2001

00
'0
o o00

901.02 MANUAL OF PATENT EXAMINING PROCEDURE
canceled from the application file wrapper of a U.S.
patent may be used as prior art as of the patent date in
that it then constitutes prior public knowledge under
35 U.S.c. 102(a). In re Lund, 376 F.2d 982,
153 USPQ 625 (CCPA 1967). See also MPEP § 2127
and § 2136.02.
901.02
Abandoned Applications
If an abandoned application was previously published
under 35 U.S.C. 122(b), that patent application
publication is available as prior art under 35 U.S.C.
102(a) and 102(b) as of its patent application publication
date because the patent application publication is
considered to be a "printed" publication within the
meaning of 35 U.S.C. 102(a) and 102(b), even though
the patent application publication is disseminated by
the U.S. Patent and Trademark Office (Office) using
only electronic media. See MPEP § 2128. Additionally,
as described in MPEP § 901.03, a patent application
publication published under 35 U.S.C. 122(b) is
available as prior art under 35 U.S.C. 102(e) as of the
earliest effective U.S. filing date of the published
application against U.S. applications filed on or after
November 29, 2000 and applications filed prior to
November 29, 2000 which are voluntarily published.
As provided in 37 CFR 1.11(a), unless a redacted
copy of the application was used for the patent application
publication, the specification, drawings, and all
papers relating to the file of an abandoned published
application are open to inspection by the public, and
copies may be obtained from the Office. The information
that is available to the public under 37 CFR
1.11(a) may be used as prior art under 35 U.S.C.
102(a) or 102(b) as of the date the information
became publicly available.
Where an abandoned application is referred to in ari
issued U.S. patent or in one of the types of published
or publicly available patent applications described in
37 CFR 1.14(e), access to the abandoned application
file may be provided to the public. See 37 CPR 1.14
(e)(2). Similarly, a copy of the application-as-filed
and/or a copy of the file wrapper and its contents may
be publicly available. See 37 CFR 1.14(c). Subject
matter from abandoned applications which is available
to the public under 37 CFR 1.14(c) or 37 CFR
1.14(e) may be used as prior art against a pending
U.S. application under 35 U.S.c. 102(a) or 102(b) as
August2001 900-2
of the date the subject matter became publicly available.
In re Heritage, 182 F.2d 639,86 USPQ 160 (CCPA
1950), holds that where a patent refers to and relies on
the disclosure of a previously copending but subsequently
abandoned application, such disclosure is
available as a reference. See also In re Lund, 376 F.2d
982, 153 USPQ 625 (CCPA 1967).
It has also been held that where the reference patent
refers to a previously copending but subsequently
abandoned application which discloses subject matter
in common with the patent, the effective date of the
reference as to the common subject matter is the filing
date of the abandoned application. In re Switzer,
166 F.2d 827, 77 USPQ 156 (CCPA 1948); Ex parte
Peterson, 63 USPQ 99 (Ed. App. 1944); and Ex parte
Clifford, 49 USPQ 152 (Bd. App. 1940). See MPEP
§ 2127(a).
Published abstracts, abbreviatures, defensive publications
(MPEP § 901.06(d)), and statutory invention
registrations (MPEPChapter 1100) are references.
901.03
Pending Applications
Except as provided in 37 CPR 1.11(b),
37 CPR 1.14(c) and 37 CFR 1.14(e), pending U.S.
applications filed before November 29, 2000 which
are not voluntarily published and applications filed on
or after November 29, 2000 which have not been published
are generally preserved in confidence (37 CFR
1.14(a)) and are not available as references. However,
claims in one nonprovisional application may be
rejected on the claimed subject matter of a copending
nonprovisional application of the same inventive
entity. See MPEP § 804. For applications having a
common assignee and •different inventive entities
claiming a single inventive concept, see
MPEP § 804.03. See also MPEP § 2127, paragraph
IV.
The American Inventors Protection Act of 1999
(AIPA) was enacted into law on November 29, 1999.
The AIPA amended 35 U.S.C. 122 to provide that,
with certain exceptions, applications for patent filed
on or after November 29, 2000 shall be published
promptly after the expiration of a period of eighteen
(18) months from the earliest filing date for which a
benefit is sought under title 35, United States Code,
and that an application may be published earlier at the
request of the applicant. See 35 U.S.c. 122(b) and

901.04(a) MANUALOF PATENT EXAMININGPROCEDURE
X-Series. These are the approximately 10,000 pat­
ents issned between 1790 and July 4, 1836. They were
not originally numbered, but have since been assigned
numbers in the sequence in which they were issued.
The number should not be cited. When copies are
ordered, the patentee's name and date of issue suffice
for identification.
1836 Series.The mechanical, electrical, and chemi­
cal patents issued since 1836 and frequently desig­
natedas "utility" patents are included in this series. A
citation by number only is understood to refer to this
series. This series comprises the bnlk of all U.S. pat­
ents issued. Some U.S. patents issued in 1861 bear
two numbers but only.the larger number should be
cited.
Reissue Series. Reissne patents (MPEP § 1401)
have been given a separate series of numbers pre­
ceded by "Re." In citing, theletters and the number
must be given, e.g., Re. 1776. The date that it is effec­
tive as a reference is the effective date of the original
patent 'application, not the filing date of the reissue
application.
Design reissue patents are numbered with the same
number series as "utility" reissue patents. The letter
prefix does, however, indicate them to' be design reissues.
A.I. Series. From 1838 to 1861, patents covering an
inventor's improvement on his or her own patented
device were given a separate series of numbers preceded
by "A.I." to indicate Additional Improvement.
In citing, the letters and the number must be given,
e.g., A.I. 113. About 300 such patents were issued.
Plant Patent Series.When .the statutes were
amended to provide for patenting certain types of
plants (see MPEP Chapter 1600) these patents were
given a separate series of numbers: In citing, the letters
"P.P." and the number must be given, e.g.,P.P. 13.
Design Patents. Patents for designs (see MPEP
Chapter 1500) are issued under a separate series of
numbers preceded by "D." In citing, the letter "D"
and the number must be given, e.g., D. 140,000.
August2001 900-4
NUMBERS FOR IDENTIFICATION OF BID·
LIOGRAPIDC DATA ON THE FIRST PAGE OF
PATENT AND LIKE DOCUMENTS (INID NUM·
BERS)
The purpose of INID Codes ("INID" is an acronym
for "Internationally agreed Numbers for the Identification
of (bibliographic) Data") is to provide a means
whereby the various data appearing on the first page
ofpatent and like documents can be identified without
knowledge of the language used and the laws applied.
They are now used by most patent offices and have
been applied to U.S. patents since Aug. 4, 1970.
Some of the codes are not pertinent to the documents
of a particular country and some which are may, in
fact, not be used. For a list of INID Codes, see MPEP
§ 901.05(b).
901.04(a) Kind Codes
On January 2, 2001, the United States Patent and
Trademark Office (USPTO) began printing the World
Intellectual Property Organization (WIPO) Standard
ST.16 code on each of its published patent documents.
WIPO Standard ST.16 codes (kind codes) include a
letter, and in many cases a number, used to distinguish
the kind of patent document (e.g., publication of an
application for a utility patent (patent application publication),
utility patent, plant patent application publication,
plant patent, or design patent) and the level of
publication (e.g., first publication, second publication,
Or corrected publication). Detailed information on
Standard ST.16 and the use of kind codes by patent
offices throughout the world is available on the WIPO
web site at http://www.wipo.int/scit/en under the links
for WIPO standards and other documentation.
In addition, some kind codes assigned to existing
USPTO patent documents were changed because,
beginning on March 15,2001, patent application publications
began to be published weekly on Thursdays.
The tables below give a summary of the kind codes
which are no longer being used on certain published
patent documents as well as a summary of the kind
codes which will be used on published patent documentsafter
January 2, 2001. It is recommended that
USPTO documents be identified by the following
three elements: (A) the two-character country code
(US for United States of America); (B) the patent or
publication number; and (C) the WIPO ST.16 kind
code. For example, "US 7,654,321 Bl" for U.S.

901.05 MANUAL OF PATENT EXAMINING PROCEDURE
Summary of USPrO Kind Codes Used on Documents Published Beginning January 2, 2001
.
WIPO Kind of document Comments
ST.16 Kind
Codes
P2 Plant Patent No previously published pre-grant publication
P3 Plant Patent Having a previously published pre-grant publication
and available March 2001 .
P4 Plant Patent Application Publica- Pre-grant publication available after March 200I
.
tion (Republication)
P9 Plant Patent Application Publica- Pre-grant publication available March 2001
tion (Corrected Publication)
S Design Patent No change
901.05 Foreign Patent Documents When the same invention is disclosed by a common
All foreign patents, published applications, and any
other published derivative material containing portions
or summaries of the contents of published or
unpublished patents (e.g., abstracts) which have been
disseminated to the public are available to U.S. examiners.
See MPEP § 901.06(a), paragraphs I.e. and
IV.C. In general, a foreign patent, the contents of its
application, or segments of its content should not be
cited as a reference until its date of patenting or publication
can be confirmed by an examiner's review of a
copy of the document. Examiners should remember
that in some countries, there is a delay between the
date of the patent grant and the date of publication.
Information pertaining to those countries from
which the most patent publications are received are
given in the following sections and in MPEP
§ 901.05(a). Additional information Can be obtained
from the Scientific and Technical Information Center.
See MPEP § 707.05(e) for data used in citing foreign
references.
inventor(s) and patented in more than one country,
these patents are called a family of patents. Whenever
a family of patents or published patent disclosures
existed, the Office selected from a prioritized list of
countries a single family member for placement in the
examiners' search file and selected the patent of the
country with the earliest patent date. If the U.S, was
one of the countries granting a patent in the "family"
of patents, none of the foreign "equivalents" was
placed in our search file. See paragraph III., below.
However, foreign patents or published patent disclosures
within a common family which issued prior to
the final highest priority patent (e.g., U.S.) may have
been placed in our paper search file and these copies
were generally not removed when the higher priority
patent was added to our search files at a later date.
Beginning in October 1995, paper copies of foreign
patents were no longer classified into the U.S. Classification
System by the U.S. Patent and Trademark
Office. See MPEP § 901.05(c) for search of recently
issued foreign patents.
I. PLACEMENT OF FOREIGN PATENT
EQUIVALENTS IN THE SEARCH FILES II. OVERVIEW OF FOREIGN PATENT
There are approximately 25 countries in which the
specifications of patents are published in printed form
either before or after a patent is granted.
UNTIL OCTOBER 1, 1995, THE FOLLOWING
PRACTICE WAS USED IN PLACING FOREIGN
PATENTEQUIVALENTS IN THE SEARCH FILES:
August 2001
900-6
LAWS
This section includes some general information on
foreign patent laws and summarizes particular features
and their terminology. Some additional details
on the most commonly cited foreign patent publications
may be found under the individual country in
.

paragraph V., below. Examiners should recall, by way
of contrast to the practice in many other countries,
under U.S. patent law a number of different events all
occur on the issue date of a U.S. patent. These events
include the following:
(A) a patentdocument, the "letters patent" which
grants and thereby creates the legal rights conferred
by a patent, is executed and sent to the applicant;
(B) the patent rights come into existence;
(C) the patent rights can be exercised;
(D) the specification of the patent becomes available
to the public;
(E) the patented file becomes available to the
public;
(F) the specification is published in printed form;
and
(G) an issue of an official journal, the Official
Gazette, containing an announcement of the patent
and a claim, is published.
In most foreign countries, various ones of these events
occur on different days and some of them may never
occur at all.
The following list catalogs some of the most significant
foreign variations from U.S. practices:
A. Applicant
In most countries, the Owner of the prospective
rights, derived from the inventor, may also apply for a
patent in the owner's name as applicant; in a few,
other persons may apply as'well orbe joined as coapplicants.
Hence applicant is not synonymous with
inventor, and the applicant may be a company. Some
countries require the inventors' names to be givenand
regularly print them on the published copies. Other
countries may sometimes prillt the inventors' names
only when available or when requested to do so.
B. Application
The word "application" is commonly used in the
U.S. to refer to the entire set of papers filed when
seeking a patent. However, in many countries and in
PCT cases, the word application refers only to the
paper, usually a printed form, which is to be "accompanied
by" or have "attached" to it certain other
papers, namely a specification, drawings when necessary,
claims, and perhaps other papers, Unless it is
otherwise noted in the following portions ofthis sec-
PRIOR ART, CLASSIFICATION, SEARCH 901.05
tion, the term "application" refers to the entire set of
papers filed.
C. Publication of Contents of Pending Applications
In general, pending applications are confidential
until a certain stage in the proceedings (e.g., upon
patent grant), or until a certain date (e.g., 18 months
after filing), as may be specified in a particular law.
Many countries have adopted the practice of publishing
the specification, drawing, or claims of pendingapplications,
In these countries, the publication of
the contents of the application occurs at a certain time,
usually 18 months after filing. The applicant is given
certain provisional rights upon publication even
though examination has not been completed or in
some cases has not even begun at the time of publication.
This publication may take either of two forms. In
the first form, some countries publish a notice giving
certain particulars in their official journal and thereat'
ter anyone may see the papers at the patent office or
order copies. This procedure is referred to as "laying
open for public inspection." There is no printed publication
of the specification, although an abstract may
be published in printed form. If anyone can inspect Or
obtain copies of the laid open application, then it is
sufficiently accessible to the public to constitute a
"publication" within the meaning of 35 U.S.C. 102(a)
and (b). The full application is thus available as prior
art as of either the date of publication of its notice or
its laying open to public inspection if this is a later
date. In re. »'yer, 655 F.2d 221, 210 USPQ 790 (CCPA
1981). See MPEP § 2127,paragraph III.
In the second form, several other countries publish,
the specifications of pending applications in printed
form ata specified time, usually 18 months after,filing,
These documents, of course, constitute references
as printed publications.
D. Administrative Systems
Patent law administration varies from country to
country. In some countries, all that is undertaken is an
inspection of the papers to determine if they are in
properform. Other countries perform an examination
of the merits on the basis of an extensive search of the
prior art, as is done in the U.S. The former are referred
to as nonexamining or registration countries, although
900-7 August2001

901.05 MANUAL OF PATENT EXAMINING PROCEDURE
some systems allow for a rejection on matters apparent
on the face of the papers, such as matters of form
or statutory subject matter.
Of the examining countries, the extent of the material
searched prior to issue varies greatly. Only a few
countries include both their own patents and a substantial
amount of foreign patent material and none
patent publications in their .search files. Some
countries specifically limit the search by rule, or lack
of facilities, to their own patents with very little or no
additional material. An increasing number of countries
are requiring applicants to giveinformation cone
cerning references cited in corresponding applications
filed in other countries.
E. Opposition
Some exanumng countries consider participation
by the public an inherent feature of their examining
system. When an application is found to be allowable
by the examiner, it is "published" for opposition.
Then there is a period, usually 3 or 4 months, within
which members of the public can oppose the grant of
the patent. In some countries, the opposing party can
be any person or company. In other countries, only
those parties who are affected by the outcome can pare
ticipate in the opposition. The opposition is an inter
partes proceeding and the opposing party can ordinarily
raise any ground on the basis of which a patent
would berefused or held invalid, including any applicable
references.
The publication for opposition may take the form of
a laying open of the application by the publication of
a notice in the official journal with the application
being then open to public inspection and the obtaining
of copies. Otherwise publication occurs by the issue
of the applications in printed form. Either way, these
published documents constitute printed publications
which are available as references under 35 U.S.C.
102(a) and I02(b).
R The Patent
Practices and terminology vary worldwide regarding
patents. In some countries, there is no "letters
patent" document which creates and grants the rights.
In other countries, the examiner grants the patent by
signing the required paper. In a few countries; the
patent is granted by operation of law after certain
events have occurred. The term "granting the patent"
August2001 900-8
is used here for convenience, but it should be noted
that 35 U.S.C. 102(a) and 102(b) do not use this terminology.
A list of granted patents is ordinarily published in
each country's official journal and some of these
countries also print an abstract or claims at or after the
granting date. Not all countries publish the granted
patent. Where the specifications of granted patents are
issued in printed form, publication seldom occurs
simultaneously with the day of grant; instead, publication
occurs a short time thereafter. There also are a
few countries in which publication does not take place
until several years after the grant.
The length of time for which the patent is enforceable
(the patent term) varies from country to country.
The term of the patent may start as of the grant of the
patent, or as of the filing date of the application.
Most countries require the payment of periodic fees
to maintain a patent in force. These fees often start a
few years after filing and increase progressively during
the term of the patent. If these fees are not paid
within the time allowed, the patent lapses and is no
longer in force. This lapsing does not affect the use of
the patent as a reference.
G Patents ofAddition
Some countries issue patents of addition, which
should be identified as such, and when separately
numbered as in France, the number of the addition
patent should be cited. "Patents of addition" generally
cover improvements of a patented parent invention
and can be obtained by the owner of the parent invention.
Inventiveness in relation to the parent invention
need not be demonstrated and the term is governed by
the term of the parent patent.
III. CORRESPONDING SPECIFICATIONS IN
A FAMILY OF PATENTS
Since a separate patent must be obtained in each
country in which patent rights are desired (except for
EP, the European Patent Convention, AP, the African
Regional Industrial Property Organization, OA, African
Intellectual Property Organization, GC, Patent
Office of the Cooperation Council for the Arab States
of the Gulf, and EA, Eurasian Patent Office, whose
members issue a common patent), there may be a
large number of patents issued in different countries

for the same invention. This group of patents is
referred to as a family of patents.
Allof the countries listed in paragraph V. below are
parties to the Paris Convention for the Protection of
Industrial Property and provide for the right of priority.
If an application is filed in one of these countries,
an application for the same invention thereafter filed
in another country, within 1 year of the filing of the
first application, will be entitled to the benefit of the
filing date of the first application on fulfilling various
conditions. See MPEP § 201.13. The patents or published
specifications of the countries of later filing are
required to specify that priority has been claimed and
to give the country, date, and number of the priority
application. This data serves the purpose, among others,
of enabling any patent based on the priority application
to be easily located.
In general, the specification ofthe second application
is identical in substance to the specification of the
first. In many instances, the second, if in another language,
is simply a translation of the first with perhaps
some variation in purely formal parts. But in a minority
of cases, the two may not be identical. For
instance, sometimes two applications filed in one
country are combined into one second application
which is filed in another country. Alternatively, a second
application could be filed for only part of the disclosure
of the priority application. The second
application may have the relationship to the first
which we refer to as a continuation-in-part (e.g.,the
second application includes additional subject matter
discovered after the first was filed). In some
instances, the second application could have its disclosure
diminished or increased, to meet the requirements
or practices of the second country.
Duplicate or substantially duplicate versions of a
foreign language specification, in English or some
other language known to the examiner, can sometimes
be found. It is possible to cite a foreign language specification
as a reference, while at the same time citing
an English language version of the specification with
a laterdate as a convenient translation if the latter is in
fact a translation. Questions as to content in such
cases must be settled based on the specification which
was used as the reference.
If a U.S. patent being considered as a reference
claims the priority of a previously filed foreign application,
it may be desirable to determine if the foreign
PRIOR ART,CLASSIFICATION, SEARCH 901,05
application has issued or has been published, to see if
there is an earlier date. For example, it has occurred
that an examiner rejected claims on the basis of a U.S.
patent and the applicant filed affidavits to overcome
the filing date of the reference; the affidavits were
controversial and the case went to appeal, with an
extensive brief and an examiner's answer having been
filed. After all this work, somebody noticed that the
U.S. patent reference claimed the priority ofa foreign
application filed in a country in which patents were
issued fairly soon, checked the foreign application,
and discovered that the foreign patent had not only
been issued, but also published in printed form, more
than 1 year prior to the filing date of the application
on appeal.
Ifa foreign patent or specification claims the priority
ofa U.S. application, it can be determined whether
the latter is abandoned, still pending, or patented.
Even if the U.S. case is or becomes patented, however,
the foreign documents may still be useful as supplying
an earlier printed publication date.
Ifa foreign patent or specification claims the priority
of an application in another foreign country, it may
sometimes be desirable to check the latter to determine
if the subject matter was patented or published
at an earlier date. As an example, ifa British specific
cation being considered as a reference claims the priority
of an application filed in Belgium, it is known at
once that a considerably earlier effective date can be
established, if needed, because Belgian patents issue
soon after filing. In addition, if the application
referred to was filed in one of the countries which
publish applications in printed form 18 months after
filing, the subject matter of the application will be
available as a printed publication as of the 18 month
publishing date. These remarks obviously also apply
to a U.S. patent claiming a foreign priority.
The determination of whether a foreign patent has
been issued or the application published is a comparatively
simple matter for some countries, but for some
it is quite laborious and time-consuming and may not
even be possible from the sources maintained by the
Scientific and Technical Information Center. Other
sources for this data which are not maintained by the
Office do exist and can be utilized for locating corresponding
patents. One source is Chemical Abstracts
which publishes abstracts of patents from a large
number of countries. Only one patent or published
900-9 August 2001

901.05 MANUAL OFPATENT EXAMINING PROCEDURE
specification from a family is abstracted in full and
any related family members issned or published are
cross-referenced. Chemical Abstract's annual indexes
include lists of patent numbers, and also include patentees'and
inventors' names in the alphabetical
author index. A concordance of corresponding patents
appearing during five year periods has also been published.
Other sources for this family data are the
INPADOC and DERWENTdata files.
When an application is .filed outside the Paris Convention
year from an earlier application, the later
application may not refer to the first application. Itis
hence possible that there will be duplicate specifications
published without any indication revealing the
fact. These. may be detected when the two copies
come together in the same subclass, Because the later
application is filed outside the convention year, the
earlier application may be prior art to the latter if it
has been published or issued.
IV. VALIDITY OF DATES DISPLAYED ON
FACE OF FOREIGN PATENT DOCU·
MENTS
The examiner is not required to prove either the
date or the occurrence of events specified on specifications
of patents or applications, or in official journals,
(Ifforeign patent offices which the Office has in
its possession. In a court action, certified copies of the
Office copies of these documents constitute prima
facie evidence in view of 28 U.S.C-. 1745. An applicant
is entitled to show the contrary by competent evidence,
but this question seldom arises.
The date of receipt of copies by the Office, as
shown by Office records or stamped on the copies,
need only to be stated by the examiner, when necessary.
V. NOTES ON INDIVIDUAL COUNTRffiS
The following table gives some data concerning the
published patent material of a number of countries to
assist in their use and citation as references. The countries
listed were selected based on the current level of
material provided for the examiner search files.
Together,the countries and organizations account for
over 98% of.the patent material that was added to the
examiner files each year. This table reflects only the
August 2001
900-10
most current patent office practice for each foreign
county specified and is not applicable for many older
foreign patentdocuments. The Scientific and Technical
Information Center staff can help examiners
obtain data related to any documents not covered by
this table, The citation dates listed in the following
table are not necessarily the oldest possible dates.
Sometimes an earlier effective date, which is not
readilyapparent from the face ofthe document, is
available. If an earlier date is important to a rejection,
the examiner should consult STIC staff, who will
attempt to obtain further information regarding the
earliest possible effective date.
How To Use Table
Each horizontal row of boxes contains information
on one or more distinct patent document from a specified
country available as a reference under 35 U.S.C.
102(a) and 102(b). If several distinct patent documents
are included within a common box of a row,
these documents are related to each other and are
merely separate documents published at different
stages of the same invention's patenting process. Usually,
this related group of documents includes a published
application which ripens into an issued patent.
Within each box of the second column of each row,
the top listed document of a related group is the one
that is"published" first (e.g., made available for public
inspection by laying open application, or application
printed and disseminated to the public). Once an
examiner determinesth.e country or organization publishing
the documents, the name of the document can
be located in the second column of the table and the
examiner can determine if a document from the
related group containing the same or similar disclosure
having an earlier date is available as a reference.
Usually, the documents within a related group have
identical disclosures; sometimes, however, there are
differences in the claims or minor differences in the
specification. Therefore, examiners should always
verify that the earlier related document also includes
the subject matter necessary for the rejection. Some
countries issue more than one type of patent and for
clarity, in these situations, separate rows are provided
for each type.

ISSUING! DOCUMENT NAME IN
PUBLISHING LANGUAGE OF ISSUING
COUNTRY OR COUNTRY (TYPE OF
ORGANIZATION DOCUMENT)
EP
PRIOR ART, CLASSIFICATION, SEARCH 901.05
FOREIGN
LANGUAGE NAME
DESIGNATING THE
DATE USED. FOR
CITATION
PURPOSES (TYPE OF
DATE)
GENERAL
COMMENTS
European Patent European patent application Date application made Printing of application
Office available to public occurs 18 months after
priority date.
FR
European patent specifica- Date published EP dates are in day!
tion month/year order.
New European patent speci- Date published
. fication (above specification
amended)
France Demande de brevet d'inven- Disposition du public de Date of laying open the
tion (patent application) la demande (date of lay- application is the earliest
ing open application)! possible date. This usudate
published ally occurs 18 months
Brevet d'invention (patent) Disposition du public du
brevet d'invention (date
of publication of the
notice of patent grant)
after the filing or priority
date but can occur earlier
at applicant's request.
The application is printed
a short time after being
laid open.
FR
France Demande de certificat d'uti- Disposition du public de
lite (utility certificate appli- la demande (date pubcation
1st level publication) Iished)
Certificat d'utilite (utility Disposition du public du
certificate, 2nd publication) certificat d'utilite(date
published)
FR dates are in day/
month/year order
DE Offenlegungschrift (unexam- Offenlegungstag (date Patentschrift are printed
Germany ined patent application) application printed) (up to four different
times) after examination
and at varions stages of
opposition.
900-11 August 2001

ISSUING/ DOCUMENT NAME IN
PUBLISHING LANGUAGEOF ISSUING
COUNTRY OR COUNTRY (TYPE OF
ORGANIZATION DQCUMENT)
PRIORART, CLASSIFICATION, SEARCH 901.05
FOREIGN
LANGUAGE NAME
DESIGNATING THE
.DATE USE.D FOR
CITATION
PURPOSES (TYPEOF
DATE)
GENERAL
COMMENTS
Tokkyo kobO (examined Upper right corner Newer docnments also
patent application) beneath number (date include second date follaid
open and printed; 1st lowing the first given in
publication when Kokai OUR Gregorian Calen-
Tokkyo kobOor Kohyo dar in year/month/day
Tokkyo koho not pub- sequence in Arabic
lished) numerals intermixed
with their.equivalent JP
characters.
JP Tokkyo shinpan seikytl Upper right corner
Japan kokoku (corrected patent beneath number (date
specification) . laid open and printed)
JP Kokai jitsuyo shin-an kobO Upper right corner
Japan (unexamined utility model beneath number (date
application) or Kohyo jitsuyo laid open and printed)
shin-an kobO (unexamined
utility model application
based on international)
Jitsuyo shin-an kobO .(exam- Upper right corner
ined utility model applica- beneathnumber (date
tion) laid open and printed; 1st
publication when Kokai
or Kohyo not published)
JP Toroku jitsuyo shin-an shin-
Japan pan seikyu kokoku (corrected
registered utility model)
JP Isyo kobO(registered design
Japan application)
RU Date application printed
Russian Federation Zayavka Na Izobretenie (1st publication) Date
(unexamined application for printed (normally 2nd
invention) Patent Na Izo- publication, but 1st pubbreteniye
(Patent) lication when application
not published)
900'13 AuguSt,ZOOl

901.05 MANUALOF PATENT EXAMlNINGPROCEDURE
ISSUINGI DOCUMENT NAMEIN
PUBLISHING LANGUAGE OFISSUING
COUNTRYOR COUNTRY(TYPEOF
ORGANIZATION DOCUMEN1')
FOREIGN
LANGUAGE NAME ..
DESIGNATING THE
. nATE USEDFOR
CITATION
PURPOSES (TYPEOF
DATE)
GENERAL
COMMENTS
RU . Supplied upon request
Russian Federation SvidetelstvoN aPoleznuyu
Model (utility model)
only
.
RU Patent Na Promishlenniy . Supplied upon request
Russian. Federation Obrazec (designpatent) only
GB Published patent application (date of printing the
United Kingdom (searched, but unexamined) application) (date of
Patent Specification (granted printing)
examined patent)
GB
United Kingdom Amended or Corrected (date of printing)
Patent Specification
(amended granted patent)
WO
World Intellectual International application (dare of printing the
Property Organiza- (pCT patent application) application)
tion
August 2001
.
900-14
.

901.05(a) Citation Data
Foreign patent publications that use Arabic and
Roman numerals in lieu of names to indicate the date
show in order the day, month, and year, or alternatively,
the year, month, and day. Roman numerals
always refer to the month.
Japanese patent application publications show the
date in Arabic numerals by indicating in order the
year of the reign of the Emperor, the month, and the
day. To convert the Japanese year of the Emperor to
the Western calendar year, for years prior to 1989, add
1925 to the JAPANESE YEAR. For example: 40.3.6
= March 6, 1965. For years after 1988, add 1988 to
the JAPANESE YEAR.
PRIOR ART, CLASSIFICATION, SEARCH 901.05(a)
Alphabetical lists of the foreign language names of
the months and of the names and abbreviations for the
United States of America follow. The lists set forth
only selected commonly encountered foreign language
names and do not include those which are similar
to the English language names and thus easily
translatable.
In using the lists, identification of the foreign language
(except for Russian), is not necessary. The
translation into English is ascertained by alphabetically
locating the foreign language name on the list.
The list of the foreign language names and abbreviations
for the United States is useful in determining
whether a foreign language patent publication indicates
the filing of a similar application in the United
States.
900-15 August 2001

901:05(a) MANUAVOF PATENT EXAMINING PROCEDURE
ALPHABETICAL LIST OF· SELECTED FOR·
EIGN LANGUAGE NAMES OF MONTHS
agosto August
aout August
augusti August
avril April
brezen March
Cerven . . June
Cervenec July
czerwiec June
decembre December
dicembre December
duben April
elokuu August
febbraio February
Feber [Februar] February
februari February
fevrier February
genuaio January
giuguo June
grudzieN December
heinakuu July
helmikuu February
huhtikuu April
Janner [Januar] January
janvier January
joulukuu December
juillet July
juin
August 2001
Juue
900-16
kesakuu Juue .
kvEten May
kwiecieN April
leden January •
lipiec July
listopad November
lokakuu
luglio July
.
.
October
luty February
maaliskuu March
maart March
maggio May
Mai
May
maj May
maraskuu November
marzec March
mars March
marts March
Marz
marzo
March
March
mei May
ottobre
paZdzieruik
prosinec
njna
settembre
sierpieN
srpen
styczeN
syyskuu
October
October
December
October
September
August
August
January
September

tammikuu January
toukokuu May
unora Febrnary
wrzesieN September
zari September
RUSSIAN
asrycT
anpeJIlo
AexaClplo
KIOAIo
HIOHIo
MaA
MapT
HOIIClplo
OXTIIClplo
ceHTIIClplo
4lespBJIIo
IIHBaplo
LIST OF SELECTED FOREIGN LANGUAGE
NAMES AND ABBREVIATIONS FOR THE
UNITED STATES OF AMERICA
Amerikas Forenta Stater;
[Forenta Staterna av Amerika]
De forenete stater av Amerika
De vorenede Stater av Amerika
EB.UU.
B.U.
E.UA
E.U.dAm.
Etats-Unis d' Amerique
Sp. St. A.
Spoj. St. Am.
Spojene Staty Americke
Stany Zjednoczone Ameriki
Stati Uniti d' America
S.UA
S.Z.A.
V.StA
V.St.v.A.
August
April
December
July
June
May
March
November
October
September
February
January
PRIOR ART, CLASSIFICATION, SEARCH 901.05(b)
Ver. St. v. Am(erika)
de Vereinigde Staten van Amerika
Vereinigde Staaten van Noord-Amerika
Vereinigten Staaten vonAmerika
Vorenede Stater i Amerika
901.05(b) Other Significant Data
NUMBERS FOR IDENTIFICATION OF BIB­
LIOGRAPHIC DATA ON THE FIRST PAGE OF
PATENT AND LIKE DOCUMENTS INCLUD­
ING INDUSTRIAL DESIGNS (INIDNUMBERS)
The purpose ofINID Codes ("INID" is an acronym
for "Internationally agreed Numbers for the Identification
of (bibliographic) .Qata") is to.provide a means
whereby the various data appearing on the first page
of patent and like documents or in patent gazettes can
be identified without knowledge of the language used
and the laws applied. They are now used by most
patent offices and have been applied to U.S. patents
since Aug. 4, 1970. Some of the codes are not pertinent
to the documents of a particular country and
some. which are pertinent may, in fact, not be used.
INID codes for industrial designs are similar to, but
not identical to, those used for patents and like documents.
INID. codes for industrial designs are provided
separately below.
INID Codes and Minimum Required for the
Identification of Bibliographic Data for Patent and
Like Documents (based on WIPO Standard ST.9)
(10) Identification of the patent. SPC or patent document
°(11) Number of the patent, SPC or patent. document .
°(12) Plain language designation of the kind of document
°(13) Kind of document code according to WIPOStan,;.
dard ST.16
°(15) Patent correction information
00(19) WIPO Standard ST.3 code, or other identification,
of the office or organization publishing the document
Notes:
(i) For an SPC, data regarding the basic patent should
be coded by using code (68).
(ii) 00 Minimum data elementfor patent documents
only.
(iii) With the proviso that when data coded (11) and
(13), or (19), (11) and (13), are used together and on a single
line, category (10) can be used, if so desired;
(20) Data concerning the application for a patent or
SPC
900_17 August 2001

ilf!a.._
(57) Description of characteristicfeatures of the industrial
designincluding indication of colors
(58) Dateof recording of anykindof amendment in the
Register (e.g., change in ownership, change in name or
address, renunciation to an international deposit; terminationof
protection),
Notes:
(i) Code (52) should be preceded by the two-letter
code, according to WIPO Standard ST.3, identifying the
country whose national classificationis used(the two-lettercode
shouldbe indicated within parentheses).
(ii) oOMinimum data element for design documents
only.
(60) References to other legally related application(s)
andregistration(s)
(62) Serial number(s) and, ifavailable, filing daters) of
application(s), registration(s) or document(s) related by
division
(66) Serialnumber(s) of the application, or the registration,
of the design(s) which is (are) a vatiant(s) of the
present one
Note:
Category code (60) should be nsed by countries which
werepreviously part of another entityfor identifying bibliographic
data elementsrelating to applications or registrations
of industrial designs;whichdatahadinitiallybeen
announced by the industrial property office of that entity.
(70) Identification of parties concerned withtheapplicationorregistration
""(71) Name(s) and addressees) of the applicant(s)
(72) Name(s) of the creator(s) if known to be such
""(73) Name(s) and addressees) of the owner(s)
(74) Name(s) and address(es) of the representative(s)
(78) Namets) and addressees) of the new owner(s) in
case of changein ownership
Note:
oOIf registration hastaken placeon orbeforethedateof
making the industrial design available to the public, the
minimum data requirement is met by indicating the
owner(s); in other cases, by indicating theapplicant(s).
(80) Identification ofcertain data related to the international
deposit of industrial designs under the Hague
Agreement Concerning the International Deposit of
Industrial Designs and data related to other international
conventions:
Designated State(s)/State(s) concerned:
(81) DesignatedState(s) acconling to the 1960 Act
(82) Staters) concerned according to the 1934 Act
(84) Designated Contracting Staters) under regional
convention.
Information regarding the owner(s):
(86) Nationality of the owner(s)
(87) Residence Orheadquarters of the owner(s)
(88) State in which the owner(s) has (have) a real and
effective industrial or cornmercial establishment
Note:
PRIOR ART, CLASSIFICATION, SEARCH 901.05(c)
The data to be referenced by lNID codes (81) to (88)
shouldbe indicated by usingthetwo-letter code according
to WIPO Standard ST.3.
901.05(c) Obtaining Copies
Until October I, 1995, the U.S. Patent and Trademark
Office (Office) received copies ofthe published
specifications of patents and patent applications from
nearly all the countries which issue them in printed
form. The Office now receives all foreign patents
from these countries in the form of CD-ROM disks
and other electronic media. The foreign patents so
obtained are available to examiners from the
USPTO's automated search tools such as the Examiner's
Automated Search Tool (EAST), the Webbased
Examiner Search Tool (WEST) and the Foreign
Patent Access System (FPAS), and from the foreign
patents branch of the Scientific and Technical Information
Center (STIC). The U.S. has agreements with
these countries to exchange patent documentation.
Until October 1995, it was the practice in the Office
to classify and place only a single patent family member
for each invention in the examiner search files. In
addition, all non-English language patent docnments
placed in the examiner files were accompanied, to the
extent possible, by an English language abstract. For
countries where the specification is printed twice,
once during the application stage and again after the
patent has been granted, only the first printing was in
general placed in the search files, since the second
printing ordinarily does not vary from the first as to
disclosnre.
Copies of various specifications not included in the
search files, whether non-English-language patent
documents or documents not printed or available for
exchange, may come to the examiner's attention. For
example, they may be cited in a motion to dissolve an
interference, be cited by applicants, or turn up in an
online search. Upon request, STIC will obtain a copy
from its extensive collection, or if necessary, from the
patent office of the particular country. In the case of
unprinted patent documents, STIC will request that
the date of granting and the date the specification was
made available to the public be indicated on the copies
provided by the country of origin.
Examiners can order copies of any foreign patent
documents from the Foreign Patent Branch. If examiners
so choose, they can make copies themselves.
The most current patent documents are accessible
900-21 August 2001

901.05(d) MANUAL OF PATENT EXAMINING PROCEDURE
through the USPTO's automated search systems,
which allows public and USPTO users to look up,
view, and print foreign documents. Older documents
can be found on microfilm in the Microfilm Room or
in the paper collection in the stacks. Examiners may
place a photocopy or translation in the shoes of the
class which he or she examines if the patents are particularly
relevant. See MPEP § 903.03.
901.05(d) Translation
Examiners may consult the translators in the
Translation Branch of the Scientific and Technical
IIlformation Center (STIC) for oral assistance in.translating
foreign patents or literature that are possible
references for an application being examined. Examiners
may also request written translations of pertinent
portions of references being considered for citation or
already cited in applications. See Mj>EP § 901.06(a),
STIC Services - Translations, and MPEP § 903.03,
Availability of Foreign Patents.
Examiners may request written translations at any
point in the examination process, at the discretion of
the individual examiner, but are encouraged to use
oral assistance andlor language reference resources as
much as possible in the early phases of examination,
Equivalent versions of foreign specifications, that
is, members of the same patent family, are often available
in English or other languages known to the
examiner. In addition, copies of previously translated
documents are stored in the Translation Branch.
Before any translation request is processed, the staff
of the Translation Branch checks for equivalents or
previous translations. The staff of STIC's Foreign Patents
Branch or the Translation Branch can assist
examiners in locating equivalents or abstracts. See
MPEP § 901.06(a), STIC Services - Foreign Patent
Services.
901.06
All printed publications may be used as references,
the date to be cited being the publication date. See
MPEP § 2128 - § 2128.02.
There are some publications kept or citculated in
every Technology Center (TC) and each examiner
should ascertain which are available in his or her TC
and whether or not any of them is likely to bear on
any assigned class. See MPEP § 707;05(e) for information
on how to cite such publications.
August 2001
901.06(a) Scientific and Technical
Information Center (STIC)
The Scientific' and Technical Information Center
(STIC), formerly known as the Scientific Library, is
located at CP3/4, Room 2COI. STIC maintains three
additional satellite information centers: the Biotechnology/Chemical
Library in CMl, Room lC19, the
Electronic Information Center in CPK2, Room 4B40,
and the Lutrelle F. Parker, Sr. Memorial Law Library
in CP 3/4, Room 3D62.
35 U.S.c. 7. Library.
The Director shall maintain a library. of •scientific and other
works and periodicals; both foreign and domestic, in the Patent
and Trademark Office to aid the officers in the discharge of their
duties.
Technical literature, foreign patent documents, and
reference and online search services available in
STIC are all important resources for the patent examiner
.to utilize. These resources provide material
which must be known or searched to determine
whether claims of applications are directly anticipated
and therefore unpatentable under the provisions of 35
U.S.C. 102. STIC handbooks, textbooks, periodicals,
reports, and other materials assist examiners in deciding
the question of patentable invention in cases in
which the primary search indicates that there is some
novelty as compared to any single reference in the art
(35 U.S.C: 103). These resources enable the examiner
to determine whether the features novel in the particular
combination searched would be obvious to a person
skilled in the art from the general state of
knowledge as reflected in the technical literature.
I. STIC COLLECTIONS
A. Books
Nonpatent Publications STIC carefully selects and purchases primarily
900-22
English-language publications in all fields of applied
technology. There is a modest collection in French
and German, mostly in the field of chemistry. Collections
of books and trade catalogs are also purchased
by STIC for permanent location in specific Technology
Centers (TCs). For instance, the Design Patent
Art Units have a great many manufacturer's catalogs..
Books may be ordered by examiners for location
in the TCs by addressing a memorandum to the
Manager of STIC via the TC Director. STIC is also

901.06(a) MANUAL OF PATENT EXAMINING PROCEDURE
D. Special Collections
Biotechnology/Chemical
With the formulation of a new biotechnology examining
group in 1988 came a mandate to improve STIC
resources in this area. The former Chemical Library,
located with the biotechnology and chemical examining
groups, was replaced by the Biotech/Chemical
Library. The library staff has been developing a collection
to reflect the needs of the examiners in the biotechnology
and chemical arts. Besides the usual
journals and books in print, the library has been collecting
backfiles of journals in microfilm and in CD­
ROM format.
Government Pnblications
In 1986, STIC was designated a Federal Depository
Library which means that it now receives a selected
number of documents published by varions U.S. government
agencies. Many of these publications are on
microfiche or CD-ROM. The primary search aids are
the Monthly Catalog of U.S. Government Publications
and the List of Classes. All the documents
received in the STIC have been cataloged into the
STIC's online catalog system and interfiled with the
main collection.
Project XL Materials
This collection of books, games, puzzles, and
manipulatives relate to the teaching of thinking skills
whether they are classified as creative thinking, critical
thinking, decision making, innovation and invention,
or problem-solving skills. The collection is
primarily aimed at, but not limited to, elementary education
and is a result of a USPTO initiative in the mid­
1980's to emphasize the importance of encouraging
creativity in America's youth. Access to the collection
is through STIC's online catalog. All Project XL
materials are available for loan.
II. HOW TO LOCATE MATERIALS IN STIC
ability. Workstations for accessing the online catalog
are located in the STIC branches.
Materials acquired by the STIC are classified
according to the Library of Congress classification
system, which employs a combination of letters and
numbers. Books and bonnd periodicals are intershelved
in the stacks according to this classification
system. New unbound periodical issues are shelved in
a separate area of each branch, in alphabetical order
by title.
IlL LOAN POLICY
All STIC materials except noncirculating items
may be charged out at the Circulation Desk. (Noncirculating
material includes reference publications, foreign
patent documents, and microfilm.) Books
circnlate for a period of 4 weeks and can be renewed
on request. Extended loan periods are available on
request. Examiners may use the Department of Commerce
Libraries as well as other Federal Government
libraries in the area. STIC's staff can answer questions
regarding the accessibility and lending practices of
other libraries. If books are needed from another
library for official use, the request should go through
the Scientific and Technical Information Center by
means of an interlibrary loan request. (See "Interlibrary
Loans" under STIC SERVICES.)
IV. STIC SERVICES
A. Reference Services
The STIC Online Catalog B. Online Searching
The primary vehicle for locating books and other
materials is the STIC online catalog. The online catalog
contains a record of all materials held by the STIC
collections, including location, call number, and avail-
August 2001 900-24
The staff of the Scientific Reference Branch, the
Electronic Information Center, the Lutrelle F. Parker,
Sr. Memorial Law Library, and the Biotechnology/
Chemical Information Branch assist examiners in the
use ofthe STIC. Upon request, they provide guidance
on finding information in the collection. If any problems
are encountered in locating materials, using the
catalogs or indexing services, or finding answers to
informational needs, please check with the staff.
They are ready and willing to assist. Queries may be
made in person or by telephone.
Online computer data base searching is provided by
the Scientific Reference Branch, the Electronic Information
Center, the Lutrelle F. Parker, Sr. Law Library,
and the Biotechnology/Chemical Information Branch.

All branches have access via modems or the in-house
system to a number of vendors' commercial database
search systems. These vendors' databases extensively
cover the field of knowledge and make it possible for
online searchers to retrieve bibliographic information
with abstracts, chemical structures, DNA sequences,
and sometimes.the full text of the articles, depending
on the database. This online search service provides a
valuable screen of the nonpatent literature for the
examiner intending to make a search of the secondary
sources of hislher area of interest.
Vendors accessed by STIC staff include DIALOG,
ORBIT, DOEIRECON, Chemical Abstracts Services
(STN), INPADOC, DataTimes, DATASTAR, DTIC/
DROLS, Intelliflenetics, and Mead Data Central.
When they are identified as meeting the needs and
requirements of the Office, new database vendors are
added. A list of the databases offered by each vendor
is available in the vendors' manuals located in each
STIC branch. Examiners may request a computer
search by submitting a request form to the appropriate
branch. Searches are usually completed and ready for
pickup within 1-2 days.
Examiners are allowed to conduct searches of
online commercial .databases independently. of STIC
staff. Training is provided through. the Patent Academy
and individual assistance is available from the
STIC staff, especially for searching chemical structures
and DNA sequences.
Online searching of nucleic and amino acid
sequences is conducted by the staff of the Biotechnology/Chemical
Information Branch through the use of
an in-house computer network developed for this purpose.
Examiners who wish to access the Automated
Biotechnology Sequence Search. (ABSS) system
located in TC 1600 must apply through their SPE to
the Biotechnology/Chemical System Branch for an ID
and password. On an as needed basis, introductory
classes are conducted by STIC staff to assist examiners
in understanding the sequence search results.
C. Foreign Patent Services
The staff of the Foreign Patents Branch of the For,
eign Document Division is available to assist with any
problem or informational need regarding foreign
patent searching or foreign patent documents.
Online search services on Orbit/Questeland Dialog
(on the basis of Derwent databases) or lNPADOC are
PRIOR ART, CLASSIFICATION, SEARCH
901.06(a)
performed for patent examiners by the Foreign PatentsBranch.
The services provided include: identification
of English-language or preferred-language
equivalents; determination ofpriority dates and publication
dates; searches by inventor name or abstract
number; other patent family and bibliographic
searches; and foreign classification information;
Examiners who choose to perform their own patent
searches after receiving appropriate training through
the Patent Academy can consult foreign patent experts
for difficult searches. In choosing the Derwent or the
INPADOC.database, examiners should be aware that
the systems overlap in coverage and have other similarities,·
but also differ in .format, kinds of searches
that can be.performed, and patent document and countrycoverage,
Derwent maintains superior coverage of
chemical patent documents, while lNPADOC
includes earlier documents and more countries and
has more extensive coverage of mechanical and electrical
patent documents than Derwent databases.
The staff of the Foreign Patents Branch can supplement
the online searching effort with manual searches
of foreign patent journals, including Official
Gazette(e); patent concordances, and/or indexes.. The
staff also.provides training in the use of the Foreign
Patents Access System (FPAS) and information ofuse
of the foreign patent collections.
SPECIAL NOTE: Members of the public can order
copies of foreign patent documents. Procedures are
outlined in a brochure entitled, "Foreign Patent Document
Copy Orders" available in STIC.
D. Translations
Examiners may consult the translators in the Transations
Branch of STIC's Foreign Document Division
for oral assistance ill translating foreign language patents
and otherliteraturesources that are possible references
for applications being examined. Oral
translations are performed for the major European
languages and for Japanese. Examiners may also
request written translations ofpertinent portions of
references being considered for citation or already
cited in applications. Full translations are also made
upon request. Written translations can be made from
virtually all foreign languages into English.
There is a computerized database located in the
Translations Branchlisting all translations which have
been made by the Branch, and a few others gathered
900_25 August 2001

901.06(b) MANUAL OF PATENT EXAMINING PROCEDURE
from miscellaneous sources. This database lists over
30,000 translations offoreign patents and articles, all
of which are. located in the Translations. Branch.
Patent translations are.indexed by country and patent
number; articles areindexed by language and author
or title..Any copies of translations coming to examiners
from outside the Office should be furnished to the
Translations Branch so that.it may make copies.forits
files.
E. Interlibrary loans
When needed for official business purposes,StIC
will borrow from other libraries materials notavail"
able in-house. Requests are initially submitted to the
Reference Fulfillment Branch. Those that can be
filled-by libraries in the metropolitan area are handled
by staff Who go out on a daily basis to retrieve
requested materials. Those that must be filled by
libraries elsewhere in the country are requested electronically
via numerous networks and commercial
vendors.•Law books cannot be borrowed by STIC for
use by examiners in connection with law courses.
When a. book or periodical is borrowed from
another library, and cited in an Office action, a photocopy
of the portion cited should be placed in an
appropriate class and subclass. This class and subclass
should be cited in the Office action.
STIC also loans its materials to other libraries
around the.country. so. that occasionally an examiner
may find that the item .he/she desires is unavailable.
Materials which ate out on interlibrary Ioan.may be
recalled for the examiner if required for immediate
use.
F. On-Site Photocopying
For the convenience of the Examining Corps, photocopy
machines are available for employee use in
STIC. These are to be used for photocopying STIC
materials which do not circulate, .or for materials
which examiners do not wish to checkout.
a Obtaining Publication Dates
Requests pertaining to the earliest date of publication
or first distribution to the public of publications
should be made to the Scientific Reference Branch or
the Biotechnology/Chemical Information Branch.
For U.S..publications, the staff can:obtain the day and
month of publication.claimed by the copyright owner.
August 2001
d
900'26
The Same information can be obtained for foreign
publications through correspondence although it will
take a little longer.
H. Tours
Special tours of the STIC can be arranged for
examiners or for outside groups.. Contact the Scientific
Reference Branch.
1. STIC Brochure
A brochure detailinglocation, hours, holdings, telephone
numbers, and services of the Scientific and
Technical Information Center is available from STIC.
901.06(b) Borrowed Publications
See MPEP § 901.06(a), STIC Services - lnterlibraryLoans.
901.06(c) Alien Property Custodian
Publications
Applications vested in the Alien Property Custodian
during World War II were published in 1943
even though they had not become patents.
Care must be taken not toreferto these publications
as patents; they should be designated as A.P.C. published
applications.
An A.P.C. published application may be used by
the examiner as a basis for rejection only as a printed
publication effective from the date of publication,
which is printed on each copy.
The manner of citing one of these publications is as
follows: A.P.C. Application of , Ser. No.
.. ;Published ..
The Patent Search Room contains a complete set of
A,P.C.published applications arranged numerically in
bonnd volumes.
901.0(i(d) Abstracts, Abbreviatures, and
Defensive Publications
Abstracts and Abbreviatures are U.S. Patent and
Trademark Office publications of abandoned applications.
Defensive Publications (the O.G defensive publication
and search copy) are U.S. Patent and
Trademark Office publications of provisionally abandoned
applications wherein the applicant retains his
or her rights to an interference for a limited time
period of 5 years from the earliest effective U.S. filing

the subject matter eucompassed by a class or subclass.
Reference to respective definitions and notes is essential.
If a search is to be expeditious, accurate, and
complete, the Manual of Classification should be used
only as a key to the class or subclass definition and
appended notes.
The Manual of Classification has the following
parts:
(A) A list of classes revised in the most recent
revision to the Manual and the reason for the revision
to each class.
(B) A list of the contents of the Manual showing
the current page date for each class and the year in
which the class was originally established.
(C) Overview of the classification system.
(D) A hierarchical arrangement of class titles
organized into four main groups by related subject
matter. It should be noted that this hierarchy is to be
used to determine document placement only as alast
resort, i.e., when none of the other classification criteria,
such as comprehensiveness, etc., allow placement.
This part also includes an exact hierarchical listing of
the synthetic resin and chemical compound classes.
(E) A list, in numerical order, by art unit indicating
the classification(s) assigned to each.
(F) A list of classifications in numerical order by
class number giving the class title, the art unit to
which the art is assigned, and the examiner search
room in which the art can be found.
(G) A list of classes in alphabetical order by class
title with associated class numbers.
(H) The class schedule for PLANTS.
(I) Class schedules for utility patent classes
arranged in numerical sequence by class number.
(J) The class schedules for the Design classes.
The Manual of Classification is available to
USPTO personnel online from the Classification Data
System (CDS) Intranet Homepage which is accessible
from the "Patent Examiner's Toolkit" toolbar,
902.01(a) Index to the U.S. Patent
Classification System
The Index to the U.S. Patent Classification System
is an alphabetic listing of technical and common
terms referring to specific classes and subclasses of
the U.S. Patent Classification System. It is intended as
an initial entry into the system and should not be con-
PRIOR ART,CLASSIFICATION, SEARCH 902.02(a)
sidered exhaustive. All appropriate class schedules
should be scanned for specifically related subclasses
and the definitions and associated notes of the pertinent
classifications must also be reviewed, even when
the citation found in the Index appears to be restricted
to a specific subject matter area.
The Index is published every year reflecting classification
as of December of the year. Suggestions or
changes to the Index are encouraged and should be
directed to the Classification Units in the Technology
Centers.
The Index is available to USPTO personnel online
from the Classification Data System (CDS) Intranet
Homepage which is accessible from the "Patent
Examiner's Toolkit" toolbar.
902.02
Class and Subclass Definitions
All of the utility classes (i.e., classes devoted to
technology), and the plant class, have definitions. All
design classes will also eventually have definitions.
Definitions state the subject matter of the classes
and subclasses much more explicitly than it is possible
to state in short class and subclass titles. A study
of the definitions is essential to determine the proper
classification of subject matter within the U.S. Patent
Classification System.
A complete, printable set of definitions of all
classesand subclasses in the U.S. Classification System
is available to USPTO personnel online from the
Classification Data System (CDS) Intranet Homepage
which is accessible from the "Patent Examiner's Toolkit"
toolbar. Thesedefinitions are revised every June
and every December.
It should be noted that classification orders frequently
affect existing definitions. Personal sets of
definitions used by examiners should be periodically
revised to reflect changes.
902.02(a) Definition Notes
Many of the definitions have accompanying notes.
These notes are of two types: (A) notes that supplement
definitions by explaining terms or giving examples,
and (B) notes referring to related disclosures
located in other classes or subclasses.
These latter notes are termed "See or Search" notes
and are helpful in explaining the limits of a class or .
subclass. They generally state the relationship to,
and difference from, other identified subject matter
900-29 August2001

(D) USPC-to-IPC(7) Concordance,
(E) USPC-to-LOCARNO Concordance
(F) IPC (7) Schedules,
(G) IPC(7) Catchword Index
The product also includes shortcuts to the Classification
Schedules and the Classificatiou Definitions in
Adobe Acrobat Portable Document Format (PDF).
902.03(d) Patent Information andSearch
Tools: the Cassis CD-ROM
Series
Access to a great deal of patent information as well
as vatious search tools is available in the Cassis CO­
RaM series. These include:
(A) Patents CLASS: Provides a list of all classifications
of a patent number and a list of all patent numbers
in a classification, showing ORs and XRs.
(B) Patents BIB: Bibliographic information for
utility patents issued since 1969 (other patents, since
1977), including issue date, title, currentclassifications,
assignee' at time of issue, status (withdrawn,
reexamined, extended term, certificate of'correction
issued or expired due to nonpayment of maintenance
fee), and abstracts for the most recent 2 112 - 3 years
depending on disc space.
(C) Patents ASSIGN: Shows assignment of patent
rights recorded at the USPTO from August 1980 to
present.
(D) Patents ASSIST: This disc provides a variety
of files: Manual of Classification; Manual of Patent
Examining Procedure; Index to the U.S. Patent Classification
System; Attorneys and Agents Registered to
Practice before the U.S. Patent and Trademark Office;
Classification Orders Index showing Classes/subclasses
abolished or established since 1976; IPC­
USPC Concordance; CJassificatiotl, Art Unit, s.up()rvisory
Patent Examiner and Ielephone Number
(CAST) showing which Art Units examine which art
. ,-' -. -
according to classification; Classification Definitions;
and Patentee-Assignee File showing assignment of
patent rights at time of issue since 1969 for utility-patents
(other patents, since 1977), and inventornames
since 1975.
The above CD-ROMs are text-searchable. Search
results can be viewed on-screen, printed, or downloaded
to diskette. Patents CLASS and Patents BIB
PRIORART, CLASSIFICATION, SEARCH 902.04
are updated with new information every two months;
Patents' ASSIGN and Patents ASSIST are updated
every three months.
In addition, to the text-searchable discs, USAPat
offers full facsimile images on CD-ROM of U.S. patents.
issued Weekly. The backfill' includes patents
issued since January 1994. Intended as a document
delivery system, USAPat allows retrieval of patents
by document number only. Excellent printed copies
can be obtained using a laser printer.
902.03(e) Automated Search Tools:
EAST and WEST
The automated search tools on examiners' desktop
computers include the Examiner's Automated.Search
Tool (EA.ST), the Web-Based Examiner Search Tool
(WEST), !IJl4 the, Foreign Patent Access System
(FPA.S). EAST and WEST provide examiners with
access to the full text of U.S. patents granted since
1970. Additionally, EAST and WEST each provide
current classification information and images for all
U.S. patents. Images are available for foreign patent
documents back to about!920 and English language
abstracts are available for many foreign patent documents
published since 1978 using the automated
search tools. Specific instructions for gaining access
to the vatious documents available using the automated
search tools can be found in the "Patent Automation"
folder in Microsoft Outlook on the
examiners' desktop computers.
The EAST and WEST productsare also available
to users.in the Patent Search Room at the USPTO.
902.04
Classification Orders
Classification orders issue once a month, each
order detailing the changes resulting from a classification
project effected that month.
Since classificationprojects issue monthly throughout
the year, orders are used to bridge the gap between
the time a project issues ,and the time the other search
tools (Manual of Classification, Index to the USPCS,
Classification Definitions) areupdated.
The order includes the following:
(A) Either the new class schedules or changes to
existingclass schedules necessitated by theproject;
(B) The changes to the definitions necessary to
support the changes in CAl, above;
900-31' August2001

The initial analysis should determine which one or
ones of the several types of subject matter (manufacture,
art, apparatns, or stock material) are contained in
the class being considered.
Further, relative to each type of subject matter, it is
necessary to consider each of the varions combinations
and subcombinations set out below:
Basic Subject Matter Combined with Featl.!'e for
Some Additional Purpose. The added pnrpose is in
excess of the scope of the subject matter for the class,
as defined in the class definition; e.g., adding a sifter
to a stone crusher which gives the added function of
separating the crushed stone.
Basic Subject Matter Combined with Perfecting
Feature. Features may be added tothe basic subject
matter which do not change the character thereof, but
do perfect it for its intended purpose; e.g., an overload
release means tends to perfect a stonecrusher by providing
means to stop it on overload and thus prevent
ruining the machine. However, this perfecting cornbined
feature adds nothing to thebasic character of
the machine.
Basic Subject Matter. The combination offeatures
necessary and essential to the fundamental character
of the subject matter treated; e.g. a stonecrusher
requires a minimum number of features as essential
before it can function as such.
Subcombinations Specialized to Basic Subject Matter.
Each type of basic subject matter may have subcombinations
specialized to use therewith; e.g., the
crushing element of a storiecrusher.
Subcombinations of General Utility. Each type of
basic subject matter may have subcombinations which
have utility with other and different types of subject
matter; e.g., the machine elements of a stonecrusher.
Subcombinations of this characterusually .areprovided
forinsome general class so that the .examiner
should determine in each instance where they are
PRIOR ART, CLASSIFICATION, SEARCH
903.03
collection by providing appropriate instructions on
how to transfer patentsfrom an existing subclass to a
new. subclass, obtaining any additional cross-reference
copies that might be needed, determining the
title of the newly established subclass or cross-reference
art collection, and assigning the numeric designation
to be placed on the new subclass or crossreference
art collection.
Allnewly created subclasses will be made official
so as to be 'i. Part of the defined classification system
and will thus appear in both the examiners' and Patent
Search Room paper files. The intent is to accomplish
this with a minimum amount of disruption tdthe
examiners. Any examiner having the Technology
Center (TC) Director's approval to create newsubclasses
should contact the post classifier for his or her
technology. As workload' permits, a classifier will be
assigned to cooperate with the examiner on the
arrangement of the .subclasses he or she. wishes'to
establish and the definitions.thereof. Then, the-examiner
will provide a marked-up computer printout of
the patents in. the subclass or subclasses being
affected. On a time available basis, the examiner may
be aided in this task by classification personnel.
When all documents have been assigned the appropriate
classification; arrangements. will be made for
contractor.processing of first the Paterit Search Room
copies, then the examiners' copies of the affected pat.
ents.New classification data will be added to the Sub.
class Data File (SDF) and Master Classification File
(MCF)as appropriate, patent copies willbe relabeled
with the new classifcation information, and thedocuments
will be refiled in the new classification. array.
Concurrently, all automated classificationindices and
systems,including the EAST and WEST search tools,
will he updated to reflect the new classification
changes.
classified. l)03.()3 Availability of Foreign Patents
903.02(c) Establishing Subclasses
and Cross-Reference
Art Collections
When an examiner finds it desirable to create a.new
subclass or cross-reference art collection, the appropriate
post classifier must be consulted before work is
begun. The post classifier will assist the examinerin
establishing any new subclass or cross-reference art
All foreign patent documents received in the Office
before October 1, 1995 wereplaced in the shoes in the
Technology Center (TCs),· according to either the
United States Patent Classification System or, in relatively
few. instances, an IPC classification. Foreign
patents received:bythe Office after October 1, 1995
are available on theUSPTO's.automated search sys-,
temsand through the Foreign PatentAccess System
(FPAS).
900,33 August2qOl

903.07(a) MANUAL OF PATENT EXAMINING PROCEDURE
(A) selection based on the most comprehensive
claim,
(B) selection based on priority of statutory category
of invention,
(C) selection based on superiority of types of subject
matter, and
(0) selection among classes in the "related subject"
listing at the front of the manual of classification.
It should be noted that the criteria, supra, may be
superseded by
.(A) special circumstances, e.g., superconductor
technology and biotechnology are superiorto all other
subject matter,
(B) prior placement of patents for a particular
body of art, or
(C) particular class lines and class notes.
Once the controlling class is determined, classification
within the class is determined by the hierarchy of
the class.
For a more complete discussion of this subject, see
the "Plan and Use of the Manual of Classification" on
page I-I et seq. of the Manual of Classification, or the
"Examiner Handbook to the U.S. Patent Classification
System."
Once the original classification is determined, all
remaining mandatory classifications are designated as
cross-references, as are any additional discretionary
classifications that the examiner wishes to apply to
the patent.
Only the correct original classification should be
left on the file of each application when passed
for issue.
The examiner must legibly fill out the issuing classification
boxes on the face of the file wrapper (or a
blue issue classification slip (PTO-270) for series 081
and earlier applications) to indicate the class and subclass
in which the patent should be classified as an
original and also the classifications in which it should
appear as a cross-reference. In those unusual cases
involving more than 31 cross references, an addendum
issue slip will be used and attached to the left
inside of the file wrapper. The examiner should be
certain that all subclasses into which cross-references
are placed are still valid.
All examiners must include alpha subclass designators
in the issuing classification boxes on the file
August 2001
900-36
wrapper or on the blue issue slips (PTO-270) at the
time of issue when appropriate. This applies to both
the original classification and the cross-reference
classification. Any time that a patent is being issued in
or cross-referenced to a subclass contaiuing alpha
subclasses, the alpha designation for the proper alpha
subclass must be included. No other designation is
permissible. Inclusion of only the numeric designation
of a subclass which includes an alpha subclass
designation is an incomplete and improper entry. A
numeric subclass from which alpha subclasses have
been created is designated with an "R" (denoting
residual) and if the patent does not fit an indented
alpha subclass, the "R" designation must be included.
It is permissible to place multiple copies of a patent
into a single set of alpha subclasses.
Digests and cross-reference art collections should
also be included in the issuing classification boxes on
the face of the file wrapper or on the blue issue slip,
but the original classification must never be a digest
or cross-reference art collection. The indication for a
copy of a patent in a digest or cross-reference art collection
must be in the cross-reference area of the issuing
classification boxes. A digest must be identified
by class number, alpha characters DIG, and appropriate.digest
number.
U.S. patents cannot be classified .in subclasses
beginning with "FOR," since these are exclusively for
foreign patents. See also MPEP § 901.07.
APPLICATIONS IN ISSUE
Where an official classification order affects an
application already passed to issue, Classification
Operations makes any necessary changes on the file
wrapper or the blue slip for series 081 and earlier
applications. Patents issuing from applications which
already have been sent to the printer will be reclassified
by, Classification Operations at the time the
patent issues.
903.07(a) Cross-Referencing- Keep
Systematic Notes During
Prosecution
Throughout the examination of an application, systematic
notes should be kept as to cross-references
needed eitherdue to claimed or unclaimed disclosure.
Examiners handling related subject matter should be

_",,"".,i,J¥'i!';i".•.o.
consulted during prosecution (whether they handle
larger unclaimed 'combinations or claimed or
unclaimed, but disclosed, subcombinauons), and
asked if cross-references are needed.
Each consultation involving a question of the propriety
of the classification of subject rnatterand/or
the need for a cross-reference must be recorded in the
SEARCH NOTES box on the file wrapper and must
include: the name of each, examiner consulted, the
date,that the consultation took place, and the,results of
the consultation including the consulted examiners' or
examiner's indication ofwhere claimed subject matter
is properly classified and where subject matter disclosed
but unclaimed is properly classified and
whether or not a cross-reference is needed.
A cross-reference MUST be provided for all
CLAIMED disclosure where possible and inserted in
the issuing classification boxes at time ofissue.
903.07(b) Issuingin Another Technology
Center Without Transfer
When an examiner issues a prospective patent in
another Technology Center (TC), he or she notes in
the space provided on the issuing classification area
on the face of the file wrapper (or on the blue issue
classification slip in series 08/ and earlier applications),
in red ink, the class and subclass of the other
TC, and in parentheses the uumber of the otherTC. A
concurring primary examiner from the other TC must
initial the area to the right of the original classification.
When the primary examiners from the two TCs
disagree on the proper original classification of the
allowed claims, the application should be submitted
for resolution to the post classifier having jurisdiction
over the art area to which the application is presently
assigned. The post classifier shall give the application
a high priority.
Only when both examiners concur in the proposed
classification of the patent, or where there has been a
ruling by a patent classifier, may patent applications
sentto issue from one TC .be assigned to classes in
another TC. .In the latter case, the patent classifier
must initial the area to the right of the original.classification.
.
PRIOR ART, CLASSIFICATION, SEARCH 903.08(a)
903.08 Applications: Assignment
and Transfer
The titles "supervisory patent examiner" and "primary
examiner," as used in this Chapter 900, include
in their definition any person designated by them to
act on their behalf. It is recognized that authority to
acceptor refuse the transfer of an application may be
delegated when such authority is deserved.
The Technology Center (TC) to which an application
is assigned is responsible for its examination until
such time as the application is officially transferred to
another TC.
The primary examiners have full authority to accept
any application submitted to them that they believe is
properly classifiable in a class in their art unit.
Applicants may be advised of expected application
transfers by using Form Paragraph 5.03.
'f[ 5.03 Reassignment Affecting Application Location
The Art Unit location of your application in the USPIO has
changed.' To aid.in correlatingany papers for this application, all
further ..correspondence regarding this application., should, be
directed to Art Unit [11.
Examiner Note:
This paragraph' shouldbe used in .all Office actions when the
location of an application is changed due to a reassignment of the
art, transfer of theapplication to a different ArtUnit, ortransfer of
anexaminer andthe examiner's docket.
903.08(a) New Applications
New nonprovisional applications are assigned to
the various Technology Centers (TCs) in the first
instance by the Office of Initial Patent Examination
(OIPE): Upon receiving an application from the
OIPE, the technical support staffin charge of processing
new applications should wand the application on
the PALM bar code reader to the art unit to which it
has been assigned and date stamp the file wrapper on
the day the file is to be delivered to the supervisory
patent examiner. The complete application (file and
drawing) are then given to the appropriate supervisory
patent examiner. The technical support staff should
not permit these cases to remain overnight before distributing.
The supervisory patent examiner or his/her designee
reviews the application to determine whether it
properly belongs in his or her art unit. If it does
900-37 August2001

903.08(b) MANUAL OF PATENT EXAMINING PROCEDURE
belong in the art unit, it is processed as a new receipt
See MPEP § 903.08(b).
When a new application is received which, in the
opinion of the primary examiner, does not belong to
his or her TC, he or she may request transfer of it to
another TC. See MPEP § 903.08(d).
Form PTO-447A, "Transfer Request" consists of
two copies and is used as a transmittal and notification
form.
If the search in connection with the frrst action
develops art showing proper classification elsewhere,
the transfer is usually initiated before the first action
is prepared and mailed.
903.08(b) Classification and Assignment
to Examiner
Every nonprovisional application, new or amended,
and including the drawings, if any, when first assigned
to a Technology Center (TC) must be classified and
assigned to an examiner for examination. The supervisory
patent examiner normally assigns the application,noting
in lead pencil in the space provided on the
face of the file the assigned class and subclass and
also the name of the examiner. The application file is
then turned over to the technical support staff for processing.
Provisional applications are not classified or
assigned since they are not examined.
If an examiner other than the supervisory patent
examiner is given the responsibility of assigning
applications, time so spent may, at the TC Director's
discretion, be charged to "Assisting SPE."
CLASSIFICATION AND ASSIGNMENT OF
APPLICATIONS FILED UNDER THE PATENT
COOPERATION TREATY (PCT)
Applications filed under the Patent Cooperation
Treaty (PCT) are normally classified on the basis of
the first claimed invention in the application. The following
special situations, however, apply:
(A) if a U.S. national application has been acted
upon by an examiner to whom the national application
was assighed on the basis of the controlling (not
necessarily the first) claim, a subsequent PCT application
claiming priority of the national application will
normally be assigned to the same examiner, or to the
examiner's art unit in his/her absence;
August 2001 900-38
(B) in all other situations where a U.S. national
application and a corresponding PCT application are
copending, irrespective of which application was·filed
first, every effort should be made to ensure that both
applications are assigned for search and examination
to the examiner to whom the PCT application would
noimally be assigned on the basis of the first claimed
invention, or to the examiner's art unit in his/her
absence;
(C) if a PCT application has been the subject of
international search and possibly international
preliminary examination outside the U.S., a U.S.
national phase application or a U.S. national application
claiming benefit of the PCT application will be
assigned like any other application, i.e., on the basis
of the controlling claim.
The object of having the U.S. national and PCT
applications assigned to the same examiner is to promote
consistent search and examination results.
Should a PCT application be submitted to a classification
unit for resolution of an assignment dispute,
the PCT application must:
(A) be hand-carried throughout the dispute resolution
process; and
(B) be returned to an examining unit within three
working days of receipt in the classification unit
See MPEP § 903.08(d) for a discussion of transfer
procedures.
903.08(c) Immediate Inspection
of Amendments
Upon the receipt of an amendment which makes a
transfer proper, steps should be taken promptly in
acc()rdance with the transfer procedure outlined in
MPEP § 903.08(d).
903.08(d) Transfer Procedure
TRANSFER BETWEEN ART UNITS WITIDN
THE SAME TECHNOLOGY CENTER
All transfers within one Technology Center (TC)
must be called to the attention of the technical support
staff so that the PALM system may be updated to correctly
indicate the assignment of the nonprovisional
application.

903.08(d) MANUALOF PATENTEXAMINING PROCEDURE
writes the assigned class and art unit number and his
or her initials on the face of the file wrapper or PALM
bibliographic data sheet and on formPTOA47A,
briefly giving reasons for assignment of the application
in the space of the form.
Inorder for the post classifiers to assign aIlapplication
outside oftheir TC,a concurring signature of an
SPE or designated examiner or classifier for the particular
class or art unit where the application is being
assigned willbe required. Generally, decisions by post
classifiers are final; no reconsiderations are perrilitted.
Under certain circumstances, a post classifier may,
contrary to controlling classification rules, assign an
application to a class.or TC which in his or her judgment
is better equipped to examine the application,
This is fully described in paragraphs 6 and 9 of MPEP
§ 903.08(e). .
Any application assignment disputes that cannot be
resolved by post classifiers. in the TCs will be
resolved by a panel which consists of designated representatives
from each TC. Where an application
assignment dispute cannot be resolved by a post classifier,
the post classifier will check the appropriate
box on theform PTO-447A and forward the application
to a designated panel member of the TC for decision.
The decisions of the panel will be final. Request
for reconsideration of the decision of the panel will be
considered ONLY in the event that a TC has not had
the opportunity to review the application prior to the
decision from the panel. Reconsideration must be
requested within 2 calendar weeks of the receipt in an
art unit of a decision of the panel.
Every application, no matter how peculiar or confusing,
must be assigned somewhere for examination.
Thus, in contesting the assignment of an application,
an examiner should point out another class that is
thought to be a better place to classify theapplication,
rather than simply arguing that the application does
not fit the examiner's class.
Where an application is refused by the receiving art
unit solely for reasons within the purview of the
examining corps, e.g., propriety of a resttiction
requirement, timeliness of transfer, etc., and there is
no dispute as to the classification of any claim, the
application should be returned directly to the art unit
that raised the issue using the appropriate line in Section
II of the PTO-447A.
August 2001
900-40
If an application contains both classification issues
and examining corps issues, e.g., a dispute both as to
the classification of claims and the propriety of
restriction, the examining issues should be resolved
first. If thereafter classification issues still need to be
addressed, use of Form PTO-447A, as above, is
appropriate. For the procedure in the classification
groups for applications which contain' examining
corps issues, see MPEP § 903.08(e), paragraph 13.
The time limits for requesting or refusing transfer
are as follows:
(A) III a new application, transfer must be
requested within 2 calendar weeks of the TC receipt
date of the application.
(B) In an amended application transfer must be
requested within 2 calendar weeks of the TC receipt
date of the amendment upon which the request for
transfer is based.
(C) The time limit for refusal of a transfer request
is 2 calendar weeks from the receipt of the transfer
request in the receiving art unit.
Exceptions to these time limits are:
(A) All new applications (docketed and undocketed)
transferred purely for security reasons.
(B) New reissue applications should be retained
in the TC indicated by the notice of filing in the Official
Gazette for 2 months following the notice before
transfer.
(C) pCT applications and other special applications
for which a different time limit is set by competent
authority.
Failure to fill in the date on the form by either the
originating examiner or the receiving examiner may
result in the assignment of the application to his or her
art unit.
If a request for transfer is not made or refused
within the 2-week time limit, the art unit having physical
possession of the application must keep it for purposes
of examination. However, if the TC Directors
having authority over the art units involved agree that
sttict adherence to the 2-week time limit would not
provide the best examination for the application, they
may waive the requirement.

The question of need for a restriction requirement
does not influence the determination of transfer.
'The regular iTIesseriger service may be used to
effect the transfer of applications, except that applications
filed under the Patent Cooperation -: Treaty
and such other special applications designated by
competent authority must be hand-carried throughout
PRIORART, CLASSIFICATION, SEARCH 903.08(d)
the transfer process unless an established practice is in
place for expediting the delivery of these applications.
If an application is hand-carried at any stage of the
transfer process, care must be taken to update the
location.of the application onthe PALM system each
time the application is moved.
900-41 August 2001

903.08(1) MANUAL OF PATENT EXAMINING PROCEDURE
As indicated earlier, when an application which
had been assigned for examination in accordance with
this subsection ultimately is allowed, it will be classified
according to the controlling claim. In effect,
assignment for examination may be on a "best examinable"
basis, but the patent will issue and be.classified
according to the rules of snperiority in
classification; thus, the search file will have a constant
set of rules governing placement of patents therein.
Where an application is being reassigned from
one examining discipline to another, under the provisions
of the "best examinable" practice, the post classifiers
are authorized to require the first or
transferring examiner to cite references pertinent to
the claimed features falling under the jurisdiction of
the art within his or her discipline. In those cases
wherein the application of the reference(s) is not evident
or clear, the transferring examiner should include
a brief statement explaining the relation and possible
application of the reference(s) to the claim(s); in case
of dispute as to the necessity of this procedure, the
post classifier has power to require the statement.
(H) See MPEP § 903.08(b) for a discussion of
how to properly assign PCT international applications
and U.S. national applications associated therewith.
(I) When an application has been.taken up by an
examiner for action and a requirement to restrict is
found necessary, a part of the claims being directed to
matter classifiable in the TC where the case is being
examined, an action requiring restriction should be
made without seeking a transfer of the case to another
TC. The action of the applicant in reply to the requirement
for restriction may result in making a transfer of
the application unnecessary.
(J) Ordinarily, where all the claims of an application
are for an article made of a specific composition
or alloy with no other structure of the article recited,
the application will be assigned to the composition or
alloy class.
(K) A class of cases exists in which either no art
or a divided art is found and in which no rule or principle
is involved. Such cases are placed where, in the
judgment of the post classifiers, they will be best
searched and adjudicated. It is often impossible to so
explain a decision in this class of cases as to satisfy, or
in any way aid, the examiners interested. Indeed, the
reasons for or against sending such cases one place or
August 2001
900-44
another may be so evenly balanced that no reason of
any value can be given.
(L) An examiner seeking the transfer of a case
may make a search, both of his or her own class and
the class to which he or she thinks the case should be
transferred, and the examiner in charge of the art unit
should exhibit the result of such search to the appropriate
Classification Unit. This is the way the expert
knowledge of the examiners involved is utilized.
(M)When an application is received in the Classification
Unit in which there is a matter under dispute
which is not related to the classification of a claim but
which is in the purview of the examiniIlg corps, e.g.,
propriety of a restriction requirement, timeliness of
submission for transfer, etc., as well as a dispute over
the classification of claims, the application will be
treated as follows.
The classifier will check the appropriate box on the
PfOc447A indicating that the application is being
returned (but not assigned) to the TC that originated
the transfer in order to resolve the nonclassifying
issues involved. The classifier will indicate on the
PfO-447A the proper classification of any claims
under dispute. If any claims under dispute are outside
the jurisdiction of the classifier associated with the
originating TC, that classifier will obtain concurrence
of an SPE or designated examiner/classifier having
jurisdiction of the claims in question, who will sign
the PfO-447A as the concurring classifier. Multiple
concurrences may be required for an application with
claims classifiable in different art areas.
It is important that newly received applications be
immediately screened for these situations so that, if
necessary, the applications may be promptly returned
to the originating TC.
If after resolution of the nonclassifying issues there
is still a dispute as to which TC should examine the
application, the originating application may be
returned to classification for assignment.
903.08(f) Post Classifier's Decision
A post classifier decides the question of the proper
classification of the application, and either (l) returns
the application to the TC which submitted it if he or
she denied the transfer request, or (2) forwards the
application to the TC to which it is transferred. See
also MPEP § 903.10.

U.S. INT. CI.' CONCORDANCE, 1999
The Office of International Patent Classification
has prepared a revised Concordance between the U.S.
classes and subclasses and the Int. Cl.'. In many
areas, the two systems are conceptually different.
With this in mind, it will be seen that a complete oneto-one
correspondence between the two systems cannot
be attained. An indication in the Concordance
may refer to only onerelevant group and not. neces-:
sarily the only group in which the patent can or should
be classified. For some inventions, the Concordance
may not indicate any truly relevant group. Accordingly,
the Concordance must be recognized as a guide
to be used in conjunction with the Int. CI?, and not as
a translation list.
The printed version of the 1999 Concordance
includes all changes in the International Classification
corresponding to changes in the United States Classification
through August 1999. The electronic Concordance
is updated monthly, and is available to USPTO
personnel online from the "Patent Examiner's Toole
kit" toolbar.
The Concordance maybe incomplete or contain
errors in some areas. Therefore, if corrections need to
be made in the Concordance, membersof the examine
ing corps are requestedto e-mail suggested changes to
the International Liaison Staff (ILS) via their SPE.
903.09(a) Locarno Classification
Designations
U.S. design patents prepared for issue after June 30,
1996 include a Locarno International Classification
designation as part ofthe bibliographic data. The purposeof
the international design classification designation
is to enhance accessibility of design patents in
foreign design search files as well as commercial
databases.
The Locarno International Classification system
was developed by members of the Paris Convention
for the Protection of Industrial Property and is administered
by the International Bureau of the World Intellectual
Property Office (WIPO).
A Locarno International Classification designation
consists of two pairs of numbers separated by a
hyphen. The first pair of numbers designates a design
class; the second pair of numbers indicates a particular
subclass within the design class. The Locarno
PRIORART,CLASSIFICATION, SEARCH 903,09(a)
Classification manual, available from WIPO, delineates
the individual classes and subclasses and
includes: (I) a general list of classes of industrial
designs divided into broad subclasses; and (2) an
alphabetical list of specific industrial designs with an
indication of the classes and subclasses into which
they should be classified.
The Locarno designation included with design
patent bibliographic data indicates the original classification
of the patented design only. There is no provision
for cross-reference designations within the
Locarno system.
Locarno International Classifications are periodically
revised by the Committee of Experts of the
World Intellectual Property Organization. The
present (seventh) edition of the system which incor-'
porates all the revisions in and before November 1998
becameeffective on January 1, 1999.
The design patentissue slip (PTO,328) includes an
area with the heading "International Classification".
A Locarno International Classification designation
must be' included on the issue slip when a design
application is prepared for issue. The Locarno designation
is printed on the design patent preceded by
INID Code [51] incompliance with ST.9 of the International
Bureau. The abbreviation. "LOC (7) CL."
follows INID code [51] and complies with the recommended
abbreviation by the International Bureau.
An example Locarno designation as it appears on a
U.S. Design Patent is as follows:
[51] LaC (7) CL.02-02
The Office of International. Patent Classification
has prepared a Concordance between the U.S. Design
Classification classes and subclasses and the seventh
edition of the Locarno International Classification.
In many areas of design subject matter, the U.S.
Design Classification and Locarno Classification systems
are parallel. In others, the two systems are conceptually
different. For example, there is no specific
provision within the Locarno system for designs
which are simulative of other objects. The InternationalClassification
is generally based on the nature
of the design rather than ornamental appearance.
Accordingly, a one-to-one relationship between the
two classification systems is not always possible.
Each' suggested designation in the Concordance
refers to a single Locarno International class and sub-
900-49 August2001

903.10 MANUALOF PATENT EXAMINING PROCEDURE
class. This designation, however, is not necessarily
the only pertinent class and subclass in which the
design could be properly classified since for some
U.S. Design Classification designations, there is no
direct parallel within the Locamo system.
903.10
Duties of the Post Classifier
Examiners should contact their post classifier on all
classification problems.
A post classifier is responsible for:
(A) The technical accuracy, adequacy, and completeness
of all search systems in his or her group
including the monitoring of any need for major and
minor reclassification projects including mechanized
systems.
(B) The full range of classification administration
functions, including the resolution of classification
disputes on pending applications, guidance on classification
matters to both examiners and the public,
outlining fields of search, and answering examiners'
requests for advice as to the proper classification of
allowed applications.
(C) The inspection of issuing applications to
determine the accuracy and adequacy of original and
cross-reference classification, including working
closely with the supervisory patent examiners and
Technology Center (TC) Directors to ensure feedback
to correct problem areas.
(D) Determination of the training needs of the
personnel in his or her assigned group relative to principles
of classification and supplying this training
through formal and informal channels.
Generally, the post classifiers are to aid the examiners
in the use, maintenance, and perfection of theclassification
system.
904 How to Search
The examiner, after having obtained a thorough
understanding of the invention disclosed and claimed
in the nonprovisional application, then searches the
prior art as disclosed in patents and other published
documents, i.e., nonpatent literature (NPL). Any document
used in the rejection of a claim is called a reference.
August 2001
900-50
In all continuing applications, the parent applications
should be reviewed by the examiner for pertinent
prior art. Where the cited prior art of a parent
application has been reviewed, this fact should be
made of record in accordance with the procedure set
forth at paragraph IL(E) of MPEP § 719.05.
The first search should be such that the examiner
need not ordinarily make a second search of the prior
art, unless necessitated by amendments to the claims
by the applicant in the first reply, except to check to
determine whether any reference which would appear
to be substantially more pertinent than the prior art
cited in the first Office action has become available
subsequent to the initial prior art search. The first
search should cover the invention as described and
claimed, including the inventive concepts toward
which the claims appear to be directed. It should not
be extended merely to add immaterial variants.
In the first action on the merits of an application,
the examiner shall make an initial endorsement in
black ink, in the space provided on the right outside
panel of the file wrapper, of the classes and subclasses
of domestic and foreign patents, abstract collections,
and publications in which the search for prior art was
made. Other information collections and sources in
which the search for prior art was made must also be
identified by the examiner. The examiner must also
indicate the date(s) on which the search was conducted.
Note MPEP § 719.05.
In subsequent actions, where the search is brought
up to date and/or where a further search is made, the
examiner must endorse and initial on the file wrapper
that the search has been updated and/or identify the
additional field of search. See MPEP § 719.05. Any
search updates should include all of the databases and
the search queries and classifications employed in the
original search.
904.01
Analysis of Claims
The breadth of the claims in the application should
always be carefully noted; that is, the examiner should
be fully aware of what the claims do not call for, as
well as what they do require. During patent examination,
the claims are given the broadest reasonable
interpretation consistent with the specification. See In
re Morris, 127 F.3d 1048,44 USPQ2d 1023 (Fed. Cir.
1997). See MPEP § 2111 - § 2116.01 for case law pertinent
to claim analysis.

904.02(a) MANUALOF PATENT EXAMINING PROCEDURE
and, consequently, represent a reference source of
limited value. These examiners must take special care
to ensure that their searches include consideration of
NFL and employ the effective use of tools specialized
to cover NFL pertinent to their searchneeds.
Search needs in some technologies, e.g., chemical
structures, DNA sequences, are very specialized and
can only be met through use of specific search tools
specially constructed and maintained to respond to
those needs. These tools cover all three reference
sources - domestic patents (including patent application
publications), foreign patent documents, and NPL
-and their use may be deemed sufficient for search of
claimed inventions in such technologies.
In recognition that there are many available NPL
search tools and their use is often complex, examiners
have been provided and are encouraged to use the services
of trained professional on-line search personnel
located in the Technology Centers (Information Technology
Resource Person (ITRP)) and in the Scientific
and Technical Information Center (STIC). for NFL
searching. See MPEP § 901.06(a) for services available
in STIC.
In crowded, highly developed arts where most
claimed inventions are directed to improvements,
patent documents, including patent application publications,
may serve as the primary reference source.
Search tool selection in such arts may focus heavily
on those providing patent document coverage.
Automated search tools covering patent documents
usually provide both a classified and text search capability.
Text search can be powerful, especially where
the art includes well-established terminology and the
search need can be expressed with reasonable accuracy
in textual terms. However, it is rare that a text
search alone will constitute a thorough search of
patent documents. Some combination of text search
with other criteria, in particular classification, would
be a normal expectation in most technologies.
Examiners will recognize that it is sometimes difficult
to express searchneeds accurately in textual
terms. This occurs often, though not exclusively, in
mechanical arts where, for example, spatial relationships
or shapes of mechanical components constitute
important aspects of the claimed invention. In such
situations, text searching can still be useful by
employing broader text terms, with or without classification
parameters. The traditional method of brows-
August2001
900-52
ing all patent documents in one or more
classifications will continue to be an important part of
the search strategy when it is difficult to express
search needs in textual terms.
Having determined what search tool(s) should be
used to conduct the search, the examiner should then
determine the appropriate search strategy for each
search tool selected. The appropriate search strategy
should be determined by the exaniiner on a case-bycase
basis along with consultation with other examiners
and/or supervisory patent examiners, where appropriate.
In order for examiners to acquire specialized skills
needed to determine an appropriate field of search in
their specific arts, each Technology Center may
develop supplemental specific guidance and training
for its examiners. This training will augment general
training and information on search tools that is normally
provided through the Patent Academy and
Search and Information Resources Administration.
904.02(a) Classified Search
A proper field of search normally includes the subclass
in which the claimed subject matter of an application
would be properly classified. It is not necessary
to Search areas in which it could reasonably have been
determined that there was a low probability of finding
the best reference(s).
In outlining a field of search, the examiner should
note every class and subclass under the U.S. Patent
Classification system and other organized systems of
literature that may have material pertinent to the subject
matter as claimed. Every subclass, digest, and
cross-reference art collection pertinent to each type of
invention claimed should be included, from the largest
combination through the various subcombinations
to the most elementary part. The field of search
should extend to all probable areas relevantto the
claimed subject matter and should cover the disclosed
features which might reasonably be expected to be
claimed. The examiner should consult with other
examiners and/or supervisory patent examiners, especially
with regard to applications covering subject
matter unfamiliar to the examiner.
The areas to be searched should be prioritized so
that the most likely areas of finding relevant prior art
are searched first.

904.02(b) Search Tool Selection
Detailed guidance on the choice and use of specific
search tools can be established only within the context
of the special requirements of each Technology Cen-
PRIOR ART, CLASSIFICATION, SEARCH 904;02(b)
ter (TC). However, a general methodology following
a "decision tree" process, set forth below, for making
broaddecisions ill search tool selection is suggested.
900-53 August2Q01

905 MANUAL OF PATENT EXAMINING PROCEDURE
ciently to determine the full value of the reference disclosure
relative to the claimed or claimable subject
matter.
905 Miscellaneous
905.02
Soft copies of U.S. patents for the examiner's personal
use may be ordered by the examiner on bluecolored
order form PIO-14A. These copies are not to
be placed in the official search file. To complete the
form PIO-14A, the examiner should indicate the
number of copies desired in the box marked "NO. OF
copms" and should also complete the "PATENT
NUMBER," "EXAMINER'S NAME," "ART UNIT,"
and "DATE OF ORDER" boxes.
When soft copies for more than three different
patent numbers are desired, the examiner can prepare
a list of the patent numbers and attach it to one copy
of Form PTO-14A which has been completed to
reflect the Examiner's Name, Art Unit, and Date of
Order.
To expedite the handling of requests for personal
copies and thereby ensure the quickest response, the
following routing procedures should be adhered to:
(A) Designated collection drops within each
Technology Center (TC) for copy orders should be
used.
(B) Clerical personnel from the Office of Classification
Support (OCS) will visit designated collection
drops at least twice each week to pick up PTO-14
orders.
Alternatively, the orders may be mailed or otherwise
delivered to the Contract Support Unit, currently
located in Crystal Park, Building 2, Room 105.
The attorneys' drop slot at the Customer Service
Window should not be used nor should the forms be
mailed to Copy Fulfillment Services as consequent
rerouting to the Office of Classification Support for
processing will result in unnecessary delay.
Copies provided for personal use will be stamped
"DO NOT PLACE IN SEARCH FILE;" any such
copy found in the search file will be removed by refiling
personnel. Because of the cost of printing copies
of patents, economy should be exercised in their use.
Personal use soft copies no longer desired by examiners
should.be destroyed.
August2001
Soft Copy Orders
900-56
In view of the high cost of printing patents with
color drawings, orders by examiners for plant patents
and other patents with color drawings for personal use
will normally not be filled.
905.03
A 2,345,678
..
PATENT NUMBER NO. OF COPIES
1
USEASEPARATE ORDER FORM FOR EACH PATENT NUMBER
EXAMINER'S NAME AK'UNIT DATEOFORDE
HENRY GREEN 3502 10-15-78
EXAMINER'S NOTES
PTO-I4A (REY.S-76) U.S.DEPAlITMENTOF COMMERCE
PATENT ANDTRADEMARK OFFICE
PATENTORDERFOR EXAMINER'S USEONLY
Ordering of Patented and
Abandoned Provisional and
Nonprovisional Application Files
In the examination of an application it is sometimes
necessary to inspect the application papers of some
previously abandoned application (provisional or nonprovisional)
or granted patent. This is always true in
the case of a reissue application and reexamination
proceeding.
Patented and abandoned files are stored at the Files
Repository located near the other USPTO bnildings in
Crystal City (Arlington, Virginia). Older files are
housed in remote warehouses located in Maryland and
Virginia.
Patented and abandoned files are ordered by means
of a PALM video display or PALM intranet site transaction.
To place such an order, the examiner is
required to input hislher PALM location code,
employee number, and patent number(s) and/or application
number(s) of the file(s) that are needed. After
transmission of the request transaction by the examiner,
a "response" screen appears on the video display
terminal or workstation browser which informs
.

him/her of the status of the request for each file. The
examiner is informed that the request
(A) is accepted;
(B) is accepted, but for which the file is located at
a remote warehouse (in which case delivery time is
increased);
(C) is not accepted because the file is notlocated
at the repository or warehouse;
(D) is not accepted because a previous request for
the file has not yet been filled; or
(E) is not accepted because the patent or application
number inputted is not valid.
Periodically each day, personnel at the Files Repository
perform a PALM print transaction which produces
a list of all accepted requests in patent number
order and, for requests for abandoned files, in application
number order. The printed record of each request
is detached from the list when its associated file is
found. It is then stapled to it. Throughout the day,
periodic deliveries of files are made directly to the
offices of their requesters by Files Repository personnel.
Upon delivery of files at the various locations,
files that are ready to be retumed to the repository are
picked up.
With the exception of certain older files, the drawings
of patented and abandoned files, if any, are now
stored within their respective application file wrappers.
Since it is desired not to separate one from the
other, both the file and its drawings are delivered
when a file is ordered.
905.04 Marking Examiners' Copies
of Patents
When the examiners' copies of patents are sent to
their respective art units to be filed, they should be
routed across the appropriate examiners' desks prior
to placement in the shoes. The assistant examiners
who examined the application should mark in pencil
on the face of the drawings, or the specifications
where there are no drawings, such features as may be
deemed advantageous in aiding understanding of the
patents in future searches.
PRIOR ART, CLASSIFICATION, SEARCH
905.05
AVAILABLE DATABASES
905,06
All files should be returned promptly to their proper
location.
Whenever an application file is moved from one
PALM location to another, e.g., removed from a Technology
Center's (TC) central files or moved from one
examiner to another, the PALM record should be
updated with its current location. The appropriate bar
code transaction should be performed. Forexample, if
the examiner to whom the application is docketed
obtains it, he/she should perform PALM transaction
1023 by pressing the F2 key on the bar code reader
(BCR) and scanning the bar code label of the file with
the light wand of the BCR. If an examiner other than
the one to whom the application is docketed obtains
the file, he/she should perform transaction 1036
which requires the input of his/her art unit number
and his/her employee number before the label is
scanned. All files should be returned promptly to
their proper location.
905.06
Application File Location
Patent Family Information
Patent family information is available at the U.S.
Patent and Trademark Office (Office) primarily
through commercial databases. See MPEP § 901.05
regarding patent family. Examiners have access to
this information either directly through the automated
search tools such as the Examiner's Automated
Search Tool (EAST) and the Web-based Examiner
Search Tool (WEST) or indirectly through the search
services of the Scientific and Technical Information
Center (STIC).
Derwent's World Patents Index (WPI) and International
Patent Documentation Center (INPADOC) are
two databases used for retrieving foreign patent information.
The WPI database is loaded in-house at the Office
and is integrated with the Office's automated search
system. WPI in-house is used whenever abstracts are
needed or when searches in addition to publication
date or patent family are required, such as searches on
inventor name or IPC (International Patent Classification).
WPI in-house is also the first choice for
searches for publication dates or patent families
because of its ease of use and low cost.
900-57 August 2001

905.06
INPADOC is usedfor quick searches for publication
dates or patent families. The Office enjoys cost
effective rates for INPADOCdue to an agreem.ent
between the Office and the International Patent Documentation
Center (now part of the European Patent
Office) negotiated several years ago. The agreement
applies only to INPADOC as accessed directly on the
INPADOC computeriu Austria, not to INPADOC as
available on other commercial database systems such
as ORBIT, DIALOG,or STN.
August2001
MANUAL OF PATENT EXAMINING PROCEDURE
900-58
ACCESS TO FOREIGN PATENT INFORMA­
TION
Patent examiners may directly search WPI in-house
or INPADOC or both.
Examiners may also request foreign patent searches
through STIC. Trained searchers in both the Reference
and Foreign Patents sections of STIC perform
patent family searches on demand, with a shortturnaround
time. The Foreign Patents section can also
help examiners get copies of foreign patents found
through online searching.
...............................

Chapter 1000 Matters Decided by Various U.S. Patent and
Trademark Office Officials
1001 Statutory Authority of Commissioner
1001.01 Modes of Exercising Authority
1002 Petitions to the Commissioner
1002.01 Procedure
1002.02 Delegatiou ofAuthority To Decide Petitious
1002.02(b) Petitious aud Requests Decided by the Office
ofthe Deputy Commissiouer for Pateut
Examiuation Policy
1002.02(c) Petitions and Requests Decided by the
Technology Center Directors
1002.02(c)(I) Petitions Decided by the Director of
Technology Center 3640
1002.02(c)(2) Petitions Decided by the Director of
Technology Center 1600
1002.02(c)(3) Petitions Decided by the Director of
Technology Center 2900
1002.02(d) Petitions and Matters Decided by Supervisory
Patent Examiners
1002.02(e) Petitions Decided by Primary Examiners
1002.02(1) Petitions and Matters Decided by the Chief
Administrative Patent Judge of the Board of
Patent Appeals and Interferences
1002.02(g) Petitions Decided by the Administrative Patent
Judges
1002.02(i) Petitions Decided by the Assistant
Commissioner for Trademarks
1002.020) Petitions Decided by the Board of Patent
Appeals and Interferences
1002.02(k)(I) Requests decided by the General Counsel
1002.02(k)(2) Requests decided by the Office of General
Law
1002.02(k)(3) Petitions decided by the Solicitor
1002.02(1) Requests Decided by the Certificates of
Correction Branch
1002.02(m) Petitions Decided by the Director of
Enrollment and Discipline
1002.02(0) Petitions and Other Matters Decided by the
Deputy Commissioner of Patents and
Trademarks
1002.02(p) Petitions and Matters Decided by the PCT
Legal Administrator
1002.02(q) Petitions Decided by the Director of Office of
Initial Patent Examination
1002.02(r) Petitions Decided by the Director of Office of
Patent Publication
1002.02(s) Petitions and Matters Decided by the Special
Program Examiners in the Technology Centers
1003 Matters Submitted to Technology Center
Directors
1004 Actions Which Require the Attention of a
Primary Examiner
1005 Exceptions to Partial Signatory Authority
1001 Statutory Authority of
Commissioner
35 U.S.C. 2. Powers and duties.
(a) IN GENERAL.- The United States Patent and Trademark
Office, subject to the policy direction of the Secretary of
Commerce-
(I) "shall be responsible for the granting and issuing of
patents and the registration oftrademarks; and
(2) shall be responsible for disseminating to the public
information with respect to patents and trademarks.'
(b) SPECIFIC POWERS.-TheOffice--
(l)shalladopt and use a seal of the Office, which shall be
judicially noticed"and with which letters patent, certificates of
trademark registrations, and papers issued by the Office shall be
authenticated;
(2) may establish regulations, not inconsistent with law,
which-
(A) shall govern the conduct of proceedings in the
Office;
(B) shall be made: in accordance with section 553 of
title 5, United States Code;
(C) shall' facilitate and expedite the processing of
patent applications, particularly those which can be filed, stored,
processed, searched, and retrieved electronically, subject to the
provisions of section 122 relating to the confidential status of
applications;
(D) may govern the recognition and conduct of agents,
attorneys, or other persons representing applicants orother parties
before the Office, and may require them, before being recognized
as representatives of applicants or other persons; to show that they
are of good moral character and reputation and are possessed of
the necessary qualifications to render to applicants or other persons
valuable service, advice, and assistance in the presentation or
prosecution of their applications or other business before the
Office;
(E) shall recognize the public interest in continuing
to safeguard broad access to' the United States patent system
through the reduced fee structure for small entities under section
41(h)(l) of thistitle;and
(F) provide for the development of a performance':'
based process that includes'quantitative and qualitative measures
and standards for evaluating cost-effectiveness and is consistent
with the principles of impartiality and competitiveness;
(3) may acquire, construct, purchase, lease, hold, manage,
operate, improve, alter, and renovate any real; personal, or mixed
property, or any interest therein, as it considers necessary to carry
out its functions;
(4)(A)may make such purchases, contracts for the construction,
maintenance, or management and operation of facilities;
and contracts for supplies or services, without regard to the provi-
1000-1 August 2001

MATTERS DECIDED BY VARIOUS U.S. PATENT AND TRADEMARK OFFICE OFFICIALS l002.02(b).
specify the time period within which a petition must
be filed. The 2-month period is uot exteudible under
37 CFR 1.136(a) since the time is within the discretion
of the Commissioner.
Form paragraph 10.20 may be usedwhere an insufficient
fee was filed with a petition or a request.
'f{ 10.20 Petition or Request Dismissed, Proper Pee Not
Submitted
Applicant's petition or reqnest nnder 37 CPR [11 filed [21 is
DISMISSED because the proper petition or processing fee of [3]
required under37 CPR 1.17 has not been submitted.
ExaminerNote:
1. Requests under 37 CFR 1.48 for correcting inventorship
require a fee as set forthin 37 CFR l.l7(i).
2. Petitions to suspend action under 37 CPR 1.103(a),and to
withdraw an application fromissue under37 CFR 1.313, require a
fee as set forth in 37 CPR 1.17(h).
3. Petitions for an extension of time under 37 CPR 1.136(a)
require varying fees. See 37 CPR 1.17(a)(I)-(5).
4. Requests to suspend action under 37 CPR 1.103(b) or (c)
require a fee set forth in 37 CPR 1.17(i).
5. Requests to defer examination under 37 CFR 1.103(d)
require a fee set forth in 37 CPR 1.17(i) and publication fee set
forth in 37 CPR 1.18(d).
1002.01 Procedure
Petitions, together with the respective application
files, are sent to the official having the delegated
authority to decide the petition. The petition may be
referred to the examiner for a formal statement under
37 CPR 1.181(c) or for an informal memorandum.
See MPEP § 711.03(d).
Where a formal statement under 37 CFR 1.181(c) is
made, a copy thereof is mailed to the petitioner by the
examiner unless the examiner is otherwise directed,
and the application file and petition, .accompanied by
the original copy of his or her statement, are returned
to the official handling the petition. If an informal
memorandum is requested, no copy thereof is mailed
to the petitioner by the examiner.
After the decision has been rendered, the decision
is entered on the "Contents" of the application file
wrapper which is then returned to the primary examiner,
who will act in accordance with the decision.
1002.02 Delegation ofAuthority
To Decide Petitions
Petitions to the Cotumissioner are decided in accordance
with the following delegation of authority.
In any case in which the authority to decide the
petition has been delegated as indicated in MPEP
§§ 1002.02 (b), (f), (g), (j) and (0), a denial of a petition
may be viewed as a final agency decision. A dismissal
of a petition, a denial of a petition without
prejudice, and other interlocutory orders are not final
agency decisions.
In accordance with 37 CPR 1.181(g), the authority
to decide petitions to the Commissioner, not otherwise
delegated, has been delegated to various Office officials.
Generally, these officials will decide petitions as
specified in the following sections for the effective
operation of the Office. Also listed are certain petitions
which are not, strictly speaking, to the Commissioner
but have been comutitted by statute or rule to
the designated officials.
The delegation of specific petitions and/or matters
identified in the sections ·below to personnel within
the Technology Centers is at the discretion of the
Technology Center Director. Any petition and/or matter
so delegated may be decided by the Technology
Center Director.
Authority not herein delegated has been reserved to
the Comutissioner and may be delegated to appropriate
officials on an ad hoc basis.
1002.02(b) Petitions and Requests Decided
by the Office of the Deputy
Commissioner for Patent
Examination Policy
All petitions decided by the Office of the Deputy
Commissioner for Patent Examination Policy other
than by the PCT Legal Administration (see MPEP
§ 1002.02(p», and inquiries relating thereto, should
be directed to "Box DAC, Assistant Commissioner
for Patents, Washington, DC 20231," except as otherwise
provided. For example, applications for patent
term extension under 35 V.S.c. 156 should be
directed to Box Patent Ext.
1. Petitions to revive an abandoned national, none
provisional or provisional patent application, 37 CPR
1.137 (both unavoidable delay and unintentional
delay), MPEP §711.03(c).
2. Petitions under 37 CFR 1.183 for waiver or suspension
of rules not otherwise provided for.
1000-5 August2001

l002.02(b) MANUALOF PATENT EXAMINING PROCEDURE
3. Petitions to invoke the supervisory authority of
the Commissioner under 37 CFR 1.181 in matters not
otherwise provided for.
4. For utility and plant applications filed on or after
November 29, 2000, petitions for an unintentionally
delayed foreign priority claim,' 37 CFR 1.55(c),
MPEP § 201.14(a).
5. For utility and plant applications filed on or after
November 29, 2000, petitions for an unintentionally
delayed domestic priority claim, 37 CFR 1.78(a)(3)
and (a)(6), MPEP § 201.11.
6. Petitions for deferment of issuance of patents;
37 CFR 1.314, MPEP § 1306.oI.
7. Petitions for' express abandonment. of patent
applications after payment of the issue' fee, MPEP
§ 711.01 and MPEP § 1308.
8. Petitions relating to assignments and issuance of
patents not otherwise provided for.
9. Petitions relating to public use proceedings,
37 CFR1.292.
10. Petitions for the withdrawal of attorney under
37 CFR 1.36 in patent applications involved in proceedings
before the Office of the Deputy Commissioner
for Patent Examination Policy.
11. Petitions under 37 CFR 1.182 in matters not
otherwise provided for.
12. Requests by the examiner (0 the Board of Patent
Appeals and Interferences for reconsideration of a
decision, MPEP § 1214.04.
13. Petitions to review refusal to accept and record
maintenance fee payment filed prior to the expiration
ofa patent, 37 CFR .1.377, MPEP § 2580.
14. Petitions to accept delayed payment of maintenance
fee in an expired patent, 37 CFR 1.378, MPEP
§2590.
15. Petitions to review a decision of Technology
Center Director, 37CFR 1.181.
16. Petitions to withdraw a holding of abandonment
not otherwise delegated, 37 CFR 1.181.
17. Requests to order a Commissioner illitiated
reexamination proceeding, 37 CFR 1.520.
18. Petitions to accept late papers in a reexamination
proceeding based upon unavoidable or unintentional
delay, 35 U.S.C. 133 and 35 U.S.C. 41(a)(7).
19. Petitions for access to patent applications under
37 CFR 1.14 with the exception of applications
August2001
1000-6
involved in or related to a proceeding before the
Board of Patent Appeals and Interferences, MPEP
§ 103,§ 104, and § 1901.05.
20. Petitions relating to reexamination proceedings
andlor reissue proceedings under 37 CFR 1.182 and
1.183.
21. Petitions relating to merger of reexamination
and reissue proceedings.
22. Petitions for acceptance of national applications
without participation of one or more inventors under
37 CFR 1.47, MPEP § 409.03.
23. Petitions relating to patent term extension
37 CPR 1.710-1.785.
24. Petitions under 37 CFR 1.181 to review a determination
of the length of the patent term extension
nnder 37 CFR 1.701.
25. Requests for reconsideration of the patent term
adjustment indicated in the notice of allowance or in
the patent, under 37 CFR 1.705.
26. Requests for reinstatement of the period of
patent term adjustment reduced pursuant to 37 CFR
1.704(b), under 37 CFR 1.705(c).
27. Petitions relating to the filing date of patent
applications under 37 CFR 1.53 and former 37 CFR
1.60 and 1.62, MPEP § 506.02.
28. Petitions relating. to filing andlor issuance of
divisional reissue applications, 37 CFR 1.177, MPEP
§ 1451.
29. Petitions to convert a nonprovisional application
filed under 37 CFR 1.53(b) to a provisional application
under 37 CFR 1.53(c) where the nonprovisional
application is before the Office of Petitions or
the Office of Patent Legal Admillistration.
30. Requests to convert a provisional application
filed under 37CFR 1.53(c) to a nonprovisional application
under 37 CFR 1.53(b) where the provisional
application is before the Office of Petitions or the
Office of Patent Legal Administration.
31. Petitions for extensions of time under 37 CFR
1.136(b) in applications before the Office of Petitions
or the Office of Patent Legal Admillistration.
32. Petitions, or requests at the initiative of the Pl'O
by someone other than a Technology Center Director,
to withdraw patent applications from issue after payment
of theissue fee under 37 CFR 1.313(b) and (c),
MPEP § 1308.

l002.02(c)(1) MANUAL OF PATENT EXAMINING PROCEDURE
1002.02(c)(I) Petitions Decided by the
Director ofTechnology
Center3640
In addition to the items delegated to all Directors
under MPEP § 1002.02(c), authority to decide the following
is delegated to the Director of Technology
Center 3640:
1. All petitions filed under 35 U.S.C. 267 to extend
the time for taking action in United States-owned
applications wherein the invention is important to the
armament or defense of the United States.
2. All petitions under 37 CFR 1.103(f) to suspend
action in United States-owned applications wherein
the publication of the invention might be detrimental
to the public safety or defense.
Any petitions filed under 35 U.S.C. 267andlor
37 CFR 1.103(f) in any area ofthe Office must be forwarded
to the Director ofTechnology Center 3640 for
decision thereon.
3. Petitions under 37 CFR 5.12(a) for foreign
license to file patent applications in foreign countries,
MPEP §140.
4. Petitionsfor rescission of secrecy order, 37 CPR
5.4, MPEP § 120.
5, Petitions to permit disclosure of subject matter
under a secrecy order, 37 CPR 5.5(b), .MPEP § 120.
6. Petitions Jor modification of secrecy order,
37 CFR 5.5(c), MPEP § 120.
7. Petitions for retroactive foreign filing license,
37 CFR 5.25, MPEP § 140.
8. Petitions relating to refusal of request for publication
of a Statutory Invention Registration, 37 CFR
1.295, MPEP § 1105.
9. Petitions relating to request for withdrawal of
request for publication of a Statutory Invention Registration,
37 CPR 1.296, MPEP § 1109.
10. Petitions relating to DOE property rights statements
under 42 U.S.c. 2182.
11. Petitions relating to NASA property rights
statements under 42U.S.C. 2457.
12. Petitions relating to foreign filing licenses
under 35 U.s.C.184.
13. Petitions concerning review of security or government
interest matters nototherwise provided for.
14. Petitions relating to any application under a
secrecy order pursuant to 35 U.S.C. 181, including
August 2001
1000-8
petitions to expunge subject matter from theapplication
to overcome the secrecy order.
1002.02(c)(2) Petitions Decided by the
Director ofTechnology
Center 1600
In addition to the items delegated to all Group
Directors under MPEP § 1002.02(c), authority to
decide the following is delegated to the Director of
Technology Center 1600:
1. Petitions regarding sequence rules, 37 CFR
1.821"1.825.
2. Petitions to make biotechnology applications
special where applicant is a small entity, MPEP
§ 708.02, item XII.
1002.02(c)(3)Petitions Decided by the
Director of Technology Center
2900
In addition to the items delegated to all Technology
Center Directors under MPEP § 1002.02(c), authority
to decide the following petitions and requests filed in
design applications is delegated to the Director of
Technology Center 2900:
1. Petitions to revive an abandoned nationa1application,
37 CPR 1.137 (both unavoidable delay and
unintentional delay), MPEP § 711.03(c).
2. Petitions relating to the filing date of patent
applications under 37 CFR 1.53 and former 37CFR
1.60 and 1.62, MPEP § 506.02.
3. Requests for expedited examination of design
applications under 37 CPR 1.155, MPEP § 1504.30.
1002.02(d) Petitions and Matters Decided
by Supervisory Patent
Examiners
1. Entry of amendments under 37 CFR 1.312 which
embody more than merely the correction of formal
matters without changing the scope of any claim,
MPEP § 714.16, § 714.16(d).
2. Approval of reopening prosecution after the filing
of an appeal brief in order to incorporate any new
ground of rejection, MPEP § 1208.01.
3. Requests for a Certificate of Correction submitted
under 37 CFR 1.322 or 1.323 unless the error is

MATTERS DECIDED BY VARIOUS U.S,PATENT AND TRADEMARK OFFICE OFFICIALS 1002,02(1)
clearly minor, clerical or typographical, in which case
it is handled by the Certificate of Correction Branch.
4. Requests for a Certificate of Correction to correct
a claim even if the request is submitted under
37 CPR 1.322.
5. Petitions uuder 37 CFR 1.324 to correct errors in
joining inventors in a pateut that is not involvedin au
interference, MPEP § 1481.
6. Disapproval of preliminary amendments under
37 CFR 1.115 or second (or subsequent) supplemental
amendments (3 rd reply) under 37 CFR 1.111, MPEP
§ 714.03(a).
7. Letters to an applicant suggesting claims for purposes
of interference, or tbe submission of Form PrO­
850, where one or more claims of one application
would differ from corresponding claims of another
application. See 37 CFR 1.603 and MPEP §2303.
8. Amendments presented after decision in an
appeal by the Board of Patent Appeals and Interferences
as to which the primary examiner recommends
entry as placing the application in condition for allowance.
See MPEP § 1214.07.
9. Requests for second or subsequent change of
inventorship in application under 37CFR 1.48. See
MPEP § 201.03.
10. Petitions under 37 CPR 1.84 to accept photographs
or color drawings in patent applications.
ll. Withdrawal from appeal of an application
remanded by the Board of Patent Appeals and Interferences.
See MPEP § 1211.
12. Requests for deferral of examination under
37 CFR 1.I03(d), MPEP § 709.
1002.02(e) Requests Decided by
Primary Examiners
Requests under 37 CFR 1.48 for correction of
inventorship in applications.
1002.02(f) Petitions and Matters Decided
by the Chief Administrative
PatentJudgeofthe Board
of Patent Appeals and
Interferences
The Chief Administrative Patent Judge is authorized
to redelegate authority to decide any of'these
petitions or matters to the Vice Chief Administrative
Patent Judge of the Board of Patent Appeals and
Interferences.
1. Designation of members of the Board of Patent
Appeals and Interferences to hear appeals and decide
interferences, both initially and on request for reconsideratioti.
35 U.S,C. 6.
2. Designation of members of the Board of Patent
Appeals and Interferences to conduct proceedings in
an interference. 37 CPR 1.610(a).
3. Designation of members of the Board of Patent
Appeals and Interferences to decide requests for
reconsideration. 37 CFR 1.640(c).
4. Requests related to superintending the functions
of the .Board of Patent Appeals and Interferences,
including:
a. Petitions under 37 CFR 1.644 in interferences.
b. Petitions under 37 CFR 1.181, 1.182, and 1.183
from actions of the Board of Patent Appeals and Interferences
or of personnel at the Board of Patent
Appeals and Interferences.
c. Petitions from a decision under 37 CFR 1.612(a)
grantin/lor denying access by a party to an interference
to pending and abandoned patent applications.
MPEP § 103.
d. Petitions for an extension of time for seeking
rehearing in an ex parte case before the Board of
Patent Appeals and Interferences.
e. Petitions from a decision under 37.CPR 1.615(b)
authorizing or declining to authorize continued concurrent
prosecution of an application involved in an
interference proceeding.
f. Petitions from a decision under 37 CFR 1.613(d)
declining to authorize a withdrawal of an attorney or
agent from representing a patty involved in an interference.
g. Petitions from a decision granting or denying a
request fora. certificate of correctiotiunder 37 CFR
1.322 and 1.323 for a patent involved in an interference.
h. Petitions seeking disqualification ofan attorney
or agent under 37 CPR 10.130(b) in an inter partes
case pending before the Board of Patent Appeals and
Interferences.
5. PetitionsunderSf U.S.C. 135(c):
a. Petitions under 35 U.S.C. 135(c) and 37 CFR
1.666(c) to permit the filing of an agreement or understanding
during the 6-month period subsequent to termination
of an interference.
1000-9 August2001

MATTERS DECIDED BY VARIOUS U.S. PATENT AND TRADEMARK OFFICE OFFICIALS l002.02(p)
1002.02(0) Petitions and Other Matters
Decided by the Deputy
Commissioner of Patents
and Trademarks
The authority to take the following actions has been
delegated to the Depnty Commissioner of Patents and
Trademarks.
1. Decide petitions to the Commissioner in patent
interference proceedings nnder 37 CPR 1.644.
2. Decide petitions to the Commissioner from
actions taken by the Board Of Patent Appeals and
Interferences.
3. Decide petitions (under 37 CFR. 1.304(a)(3) or
37 CFR 2.145(d)) seeking to extend the time for filing
a notice of appeal to the U.S. Court of Appeals for the
Federal Circuit or for commencing a civil action seeking
judicial review of a decision of the Board of
Patent Appeals and Interferences or the Trademark
Trial.and Appeal Board.
4. Decide petitions under 37 CPR 1O.2(c) from a
final decision of the Director of Enrollment and Discipline.
5. Render final decisions in proceedings under
35 U.S.C. 32 in which the Director of Enrollment and
Discipline seeks to exclude Or suspend a practitioner
from practice before the Patent and Trademark Office.
6. Render final decisions in proceedings under
35 U.S.c. 32 seeking to disqualify a practitioner andl
or the practitioner's firm in all cases in the Patent and
Trademark Office.
Ifthere is a vacancy in the position of Deputy Come
missioner for Patents and Trademarks, decisions on
petitions in patent interference cases will be signed by
the Commissioner of Patents and Trademarks.
Upon receipt of a petition and without waiting for
any opposition, the entire interference file is to be forwarded
to the Office of the Solicitor. The Solicitor is
directed to promptly cause a review to be made of the
petition and to prepare a draft decision for the Deputy
Commissioner or Commissioner as may be appropriate.
The Solicitor is authorized to take any interlocutory
action, i.e., extending times for filing oppositions
and seeking judicial review, obtaining agreement on
facts from the parties, etc.,· as may be necessary to
promptly dispose of the petition.
1002.02(p) Petitions and Matters
Decided by the PCT
Legal Administrator
I. Petitions to withdraw the Notice of Acceptance
andlor filing receipt and indication of the steps necessary
for completion of the national stage in a national
application requesting treatment under 35 U.s.c. 371.
2. Petitions for withdrawal of attorney or agent of
record in proceedings before PCT Operations andlor
the Office of the PCT Legal Administrator, 37 CFR
1.36, MPEP § 402.06.
3. Petitions for access to an international application
ora national application (i.e., a national stage
application or a national application which is continuing
from an international application) pending in PCT
Operations andlor the Office of the PCT Legal
Administrator.
4. Requests under 37 CFR 1.26 or 1.446 for refund
of fees paid in an international application or in a
national application (i.e., a national stage application
or a national application which is continuing from an
international application) before PCT Operations andl
or the Office of the PCT Legal Administrator.
5. Petitions under 37 CFR 1.182 to convert a
national application which was filed under 35 U.S.c.
371 to an application filed under 35 U.S.C. 111(a) or
to convert a national application which was filed
under 35 U.S.C. l11(a) to an application filed under
35 U.S.C. 371.
6. Petitions under 37 CFR 1.181 to withdraw the
holding of abandonment where the holding was made
in PCT Operations or in the PCT Legal Office.
7. Petitions under 37 CFR 1.181 to invoke the
supervisory authority of the Commissioner in circumstances
arising in PCT Operations andlor the Office of
the PCT Legal Administrator other than the circumstances
set forth in paragraph 6, above.
8. Petitions under 37 CPR 1.137 (both unavoidable
delay and unintentional delay) to revive an application
filed under the Patent Cooperation Treaty (PCT).
9. Petitions under 37 CFR 1.425 to accept the signature
in .an international application on behalf of an
applicant.
10. Petitions under 37 CFR 1.47 or a submission
under 37 CFR 1.42 or 1.44 to accept the signature in a
national stage application on behalf of an applicant.
1000-11 August2001

lOO2.02(q) MANUALOF PATENT EXAMINING PROCEDURE
11. Requests under 37 CFR 1.48 or a submission
under 37 CFR 1.28 (change ofinventorship and small
entity status, respectively) in anational stage application
prior to entry into the national stage.
12. Petitions under 37 CFR 1.182 or 1.183 filed in
an international application relating to filing date matters,
drawing problems, priority claim issues, Express
Mail problems, Chapter II Demand problems, issues
relating to obvious error and issues relating to withdrawal.
13. Petitions under 37 CFR 1.182 or 1.183 dealing
with circumstances other than those set forth in paragraph
12, but relating to issues under the PCT.
14. Decisions withdrawing all. examiner's office
action in an application where the application is not.in
compliance with the PCTprovisions of the Treaty,
U.S. Law or the Regulations.
15. Petitions dealing with PCT related issues. in an
application .filed under 35 U.S.C. l1l(a) (such as
applications where there is a potential claim for benefit
under 35 U.S.C. 365).
16. Petitions to convert a nonprovisional application
filed under 37 CFR 1.53(b) to a provisional application
under 37 CFR 1.53(c) where the
nonprovisional application is before PCT Operations
andlorthe Office of thePCT Legal Administrator.
. 17. Petitions relating to international applications
filed under the Patent Cooperation Treaty not otherwise
provided for..
l002.02(q) Petitions and Requests Decided
by the Director ofQffice()f
Initial Patent Examination
1. Requestsunder37 CFR 1.48(d) to add the name
of all inventor ina provisionalapplication.
2. Requests under 37 CFR 1.48(e) to delete the
name of the person erroneously named as an inventor
in a provisional application.
3. Petitions to convert a nonprovisional application
filed under 37 CFR1.53(b) to a provisional application
under 37 CFR1.53(c) where the nonprovisional
application is before the Office of Initial Patent Examination
or where the nonprovisional application is
before the Office of Pnblications.
4. Requests to convert a provisional application
filed under 37 CFR 1.53(c) to a nonprovisional application
under 37 CFR 1.53(b) where the provisional
August2001
1000-12
application is before the Office ofInitial Patent Examination.
5. Petitions nnder 37 CFR 1.182 to accept omitted
page(s) or drawing(s) and be accorded a filing date as
of the date of such submission, or to accept drawings
for purposes of a patent application publication.
6.· Petitions to withdraw holding of abandonment
where notices of abandOnment were mailed by the
Office of Initial Patent Examination.
7. Petitions for extension of time under 37 CFR
1.136(b) in applications before the Office of Initial
Patent Examination.
l002.02(r) Petitions Decided by the
Director of Office of Patent
Publication
1. Petitions to withdraw holding of abandonment
where notices of abandonment were mailed by the
Office of Patent Publication.
2. Petitions for express abandonment to avoid publication
of the application (should be directed to BOX
PGPUB-ABN), 37 CFR 1.138(c), MPEP § 711.01.
3. Requests to issue patent in name of the assignee
after payment of the issue fee, 37 CFR 3.8l(b), MPEP
§ 307.
l002.02(s) Petitions and Matters
Decided by the. Special
ProgramExaminers in
the Technology Centers
1. Petitions to make patent applications special
under 37 CFR 1.102, MPEP § 708.02:
(a) on the ground of 'applicant's age or state of
health,MPEP § 708.02, itetrtIII & IV;
(b) a continuation-in-part of aneatlierapplication;
(c) under the Environmental Quality Program,
MPEP § 708.02, item V;
(d) under the Energy Program, MPEP § 708.02,
itemVI;
(e) because the application invokes safety of
research in the field of Recombinant DNA, MPEP
§ 708.02, item VII;
(f) under the Special Examining Procedure for certain
new applications - accelerated examination,
MPEP§ 708.02, item VIII;
(g) superconductivity, MPEP § 708.02, item IX;

MATTERS DECIDED BY VARIOUS U.S. PATENT AND TRADEMARK OFFICE OFFICIALS 1004
(h) inventions relating to HIV/AIDS and cancer,
MPEP § 708.02, item X;
(i) relating to inventions for countering terrorism,
MPEP § 708.02, item XI;
(j) on the ground of prospective manufacture,
MPEP § 708.02, item I;
(k) on the ground ofinfringement, MPEP § 708.02,
item II; and
(i) for reasons not otherwise provided for.
2. Petitions for withdrawal of attorney from application
pending in the Technology Centers, 37 CFR
1.36.
1003 Matters Submitted to
Technology Center Directors
The following is a list of matters which are submitted
to the appropriate Technology Center Director,
together with a reference to any section of this manual
where such matters are more fully treated.
1. Requests for a Certificate of Correction in which
the:
i. request raises a novel issue or about which there
is some question;
ii. request is for a patent known to be in litigation;
or
iii. request deals with a legal matter (e.g., the insertion
of foreign priority data or cross referencing to
prior U.S. patent applications) unless the file reflects
that the examiner has already ruled on the matter and
that failure to print the material was clearly an Office
error, in which case it will be handled by the Certificate
of Corrections Branch.
2. Return of papers entered on the "Contents" of the
file wrapper. See MPEP § 201.14(c), § 604.04(a)and
§ 719.01.
3. Return of papers containing discourteous
remarks. See MPEP § 714.19 and § 714.25.
4. Certain rejections on double patenting of divisional
(or parent) case when restriction or election of
species has previously been required, MPEP § 804.04.
5. Request for patentability report, MPEP
§ 705.01(e).
6. Actions which hold unpatentable claims copied
from a patent for interference purposes where the
grounds relied upon are equally applicable to the patentee,
MPEP § 2307.02.
7. Interferences between applications neither of
which is in condition for allowance, MPEP § 2303.
8. Letters requesting jurisdiction from Board of
Patent Appeals and Interferences of applications
involved in appeal or interference.
9. Letters to an applicant suggesting claims for purposes
of interference, the adoption of which by the
applicant would result in the withdrawal of an application
from issue, MPEP § 2305.04.
10. Examiner's answers containing a new interpretation
of law. See MPEP § 1208.
II. Proposed interferences between applications
whose effective filing dates differ by more than 6
months. See MPEP § 2303.
12. Protests filed againstissuance of a patent. See
MPEP § 1901.06.
13. Letters suggesting claims to an application in
issue for purposes of interference with a patent. See
MPEP § 2305.04.
14. Requests by the examiner to the Board for
reconsideration of a decision before forwarding to the
Office of Petitions, MPEP § 1214.04.
15. Second or subsequent suspension of action in
patent application under 37 CFR 1.103 on examiner's
initiative. MPEP § 709.
16. Request by the examiner to withdraw an application
from issue.
17. An unusual fact situation in a patent that establishes:
i. there is a "compelling reason" to order reexamination,and
ii. at least one claim in the patent is prima facie
unpatentable over prior patents and/or printed publications.
See 37 CFR 1.520, MPEP § 2239.
18. Applications containing examiner's answers
lacking the appropriate indication that an appeal conference
was held. See MPEP § 1208.
All unusual questions ofpractice may be referred to
the Technology Center Directors.
1004 Actions Which Require the
Attention ofa Primary Examiner
There are some questions which existing practice
requires the primary examiner to be personally
responsible for. The following actions fall in this category:
Final rejection (MPEP § 706.07).
Proposing an interference (MPEP § 2309).
1000-13 August2001

1005 MANUAL OF PATENT EXAMINlNG·PROCEDURE
Disposition of an amendment in an application' in
interference looking to the formation of another
interference involving that application (MPEP
§ 2364.01).
Calling Administrative Patent Judge's attention to
a discovered reference whichmakes aclaimcorresponding
to a countunpatentable (37 CPR 1.641,
MPEP § 2341).
Rejection of a previously allowed claim (MPEP
§ 706.04).
Classification of allowed cases (MPEP § 903.07).
Holding of abandonment for insufficient reply
(MPEP § 711.03(a)).
Suspension of exaininer's action (MPEP § 709).
Treatment of newly filed application which obviously
fails to comply with 35 U.S.C. 112 (MPHI'
§ 702.01).
Consideration of the advisability of a patentability
report (MPEP §}05.01(a)).
Withdrawal offinal rejection (MPEP § 706.07(d)
and § 706.07(e)).
All examiner's answers on appeal (MPEP § 1208).
Decision on reissue oath or declaration (MPEP
§ 1414).
Decision on affidavits or declarations under
37 CFR 1.131 (MPEP § 715.08) and under
37 CFR 1.132 (MPEP § 716).
Decision as to acceptance of aIIl"ndments, statements,
and oaths or declarations filed under
37 CFR 1.48 (MPEP § 201.03).
International Preliininary Examination Reports
(MPEP § 1879).
For a list of actions that are to be subinitted to the
Technology Center Directors, see MPEP
§ 1002.02(c) and § 1003.
August2001
1000-14
1005 Exceptions to Partial
Signatory Authority
Examiners who are delegated partial signatory
authority are expected to sign their own actions with
the exception of the following actions which requite
the Signatureof the primary exaininer:
Allowances (MPEP § 1302.13).
Examiner's ainendments (MPEP § 1302.04).
Quayle actions (MPEP § 714.14).
Final rejections (MPEP §706.07 and § 803.01).
Actions on amendments subinitted after final
rejection (MPEP §.714.12).
Examiner's answers on appeal (MPEp §1208).
Initiation of an interference (MPEP § 2309).
Actions suggesting claims for interference purposes
(MPEP §2305).
Actions involving copied patent claims (MPEP
§ 2307).
Actions reopening prosecution (MPEP § 1214.07).
Requests for withdrawal from issue (MPEI'
§.1308).
37 CFR 1.312 amendments (MPEP § 714.16).
Rejection of previously allowed claim (MPEP
§ 706.04).
Final holding of abandonment for insufficient
reply (MPEP § 711.03(a)).
Actions based on affidavit or declaration evidence
(37CFRl.13land 1.132 (MPEP § 715.08 and
§ 716)).
Suspension of exaininer's action (MPEP § 709).
Reissue applications (decisions on reissue oath or
declaration) (MPEP § 1444).
Requests for an extension of time under 37 CFR
1.136(b) (MPEP § nO.02(e)).
Reexamination proceedings (MPEP §2236).
International Preliininary Examination Reports
(MPEP § 1879).
•••••••••••••••••••••••••••••

1101
1103
1105
1107
1109
1111
Chapter 1100 Statutory Invention Registration (SIR)
Request for Statutory Invention Registration
(SIR)
Examination of a SIR
Review of Final Refusal to Publish SIR
Preparing a SIR for Publication
Withdrawal of SIR Request
SIR Publication and Effect
1101 Request for Statutory
Invention Registration (SIR)
35 u.S.c. 157. Statutory invention registration.
(a) Notwithstanding any other provision of this title, the
Director isauthorized- to publish a statutory invention registration
containing the -specification and drawings of a regularly f.t.led
application for a patentwithout examination ifthe applicant -
(1) meets the requirements of section 1120fthis title;
(2) has complied with the requirementsfor printing, as set
forth in regulations of the Director;
(3) waives the right to receive a patent on the invention
within such period as may be prescribed by the Director; and
(4) pays application, publication, and other processing
fees established by the Director.
Ifan interference is declared with respect to such an application,
a statutory invention registration may not be published
unless the issue of priority of invention is finally determined in
favor of the applicant.
(b) The waiver under subsection (a)(3) of this section by an
applicant shall take effect upon publication of the statutory invcntion
registration.
(c) A statutory invention registration published pursuant to
this section shall have all of the attributes specified for patents in
this title except those specified in section 183 and sections 271
through 289 of this title. A statutory invention registration shall
not have any of the attributes specified for patents in any other
provision of law other than this title. A statutory invention registration
published pursuant to this section shall give appropriate
notice to the public, pursuant to regulations which the Director
shall issue, of the preceding provisions of this subsection. The
invention with respect to which a statutory invention certificate is
published is not a patented invention for purposes of section 292
of this title.
(d) The Director shall report to the Congress annually on the
use of statutory invention registrations. Such report shall include
an assessment of the degree to which agencies of the federal government
are making use of the statutory invention registration system,
the degree to which it aids the management of federally
developed technology, and an assessment of the cost savings to
the Federal Government of the uses of such procedures.
37 CFR 1.293. Statutory invention registration.
ea) An applicant for an original patent may request, at any
time during the pendency of applicant's pending complete application,
that the specification and drawings be published as a statutory
invention registration. Any such request must be signed by
1100"1 August2001

1103 Examinationof a SIR
37 CFR 1.294. Examination ofrequest for publication ofa
statutory invention registration and patent application to
which the request is directed.
(a) Any request for a statutory invention registration will be
examined to determine if the requirements of § 1.293 have been
met. The application to which the request is. directed will be
examined to determine (1) if the subject matter of theapplication
is appropriate for publication, (2) if the requirements for publication
are met, and (3) if the requirements of 35 U.S.c. 112 and
§ 1.293 of this part are met.
(b) Applicant will be notifiedof the results of the examination
set forthin paragraph (a) of this section. Ifthe requirements
of § 1.293 and this section are not met by the request filed, the
notification to applicantwill set a period of time within which to
comply with the requirements in orderto avoid abandonment of
the.application. Ifthe applicationdoes not meet the requirements
of 35 U.S.c. 112, the notification to applicantwill include a rejection
underthe appropriate provisions of 35 U.S.C. 112. The periods
for reply established pursuant to this section are subjectto the
extension of time provisions of § 1.136. After reply by the applicant,
the applicationwill again be considered for publicationof a
statutory invention.registration. If the requirements of § 1293 and
this section arenot timely met, the refusal to publish will be made
final..Ifthe requirements of 35 U.S.C. 112 are not met, the rejection
pursuant to 35 U.S.C. 112 will be made final.
(c) If the examination pursuant to this section results in
approval of the request for a statutory invention registration the
applicant will be notified of the intentto publish a statutory invention
registration.
An examiner in Art Unit 3641 or 3662, Where
appropriate, will determine whether the application in
which a request for a statutory invention registration
has been filed is a pending nonprovisional application.
If the application was abandoned at the time the
request was filed, has been patented, or has been
allowed and the issue fee paid, the examiner should
return the SIR request to the requester accompanied
by a Return of Statutory Invention Registration
Request to Requester notice (form PTOL-442).
If the application is pending, the examiner should
ascertain whether an Office action with a rejection
under 35 U.S.C. 112 has been issued and not replied
to. If so, and if there remains any time to reply to the
rejection, the examiner should send the applicant a
courtesy notice requiring a timely reply. If no time for
reply remains, the application is abandoned and the
examiner should inform the applicant of this fact.
After the examiner handling the SIR has ascertained
that all outstanding rejections under 35U.S.C.
112 have been replied to, the examiner should verify
STATUTORY INVENTION REGISTRATION 1103
that the request for a SIR meets the requirements of
37 CFR 1.293. First, applicant should be notified of
any defects in the signature on the SIR request or of
any inadequacy of the SIR fee. A l-month time period
should be set for applicant to correct the signature or
fee before any further consideration of the SIR
request is given. Form PTOL-444 may be used for this
purpose. Next, applicant should be given 1 month to
correct any other informalities in the SIR request
under 37 CPR 1.293 and any informalities in the
application under 37 CFR 1.294 using a Notice of
Informal Statutory Invention Registration (SIR)
Request, form PTOL-445. The examiner should also
determine whether the application complies with 35
U.S.C. 112. Ifnot, a rejection with a 3-month shortened
statutory period for reply should be made using a'
Notice of Noncompliance with 35 U.S.C. 112 of
application having SIR Request, form PTOL-448.
Both form PTOL-445 and form PTOL-448 can be
mailed at the same time. If they are, applicant should
be given a 3-month shortened statutory period to reply
to both forms.
If applicant's reply to form PTOL-445 does not correct
the defects, the SIR request should be finally
refused using a Notice of Final Refusal of Informal
Statutory Invention Registration (SIR) Request, form
PTOL-446. If applicant's reply to the rejection set
forth on form PTOL-448 does not bring the application
into compliance with 35 U.S.c. 112, the rejectiori
should be made final.
After the application complies with 37 CFR 1.293,
37 CPR 1.294, and 35 U.S.C. 112, the examiner
should determine whether the applicationis involved
in a pending interference. If so,' applicant should be
notified, using form PTOL-449, that no decision will
be made on the SIR request until the interference proceedings
are concluded.
If the applicant has lost priority of any claims due
to a concluded interference, applicant should be given
1 month, using form PTOL-449, to cancel the lost
claims (if a statutory invention registration is still
desired with claims on which priority was not lost) or
to request. withdrawal of the request for statutory
invention registration (if further prosecution as to patentability
is desired). See MPEP § 1109. If none of the
claims in the application was lost in interference, and
if the application complies with 37 CFR 1.293,
37 CFR 1.294, and 35 V.S.C. 112, then the applica-
1100-5 August 2001

tion Registration has been mailed, the examiner handling
the SIR shonld ascertain whether any
outstanding rejection under 35 V.S.c. 112 is present
in the application. If so, the examinershould require a.
timely reply to the rejection using a Response to
Request to Withdraw Request for a Statutory Invention
Registration, form PfOL-450. After a timely
reply to the rejection is received, the request to withdraw
the SIR request will ordinarily be granted and
the application forwarded for further examination to
whichever art unit would ordinarily examine the art
area in which the application is classifiable.
Any request to withdraw a SIR filed after the mailing
date of the Notice of Intent to Publish Statutory
Invention Registration must be in the form of a petition
pursuant to 37 CFR 1.183 accompanied by the
fee set forth in 37 CPR 1.l7(h). The TC Director
responsible for the art unit handling the SIR will
inform the applicant of the decision on the petition via
a form PfOL-450 or Response to Petition under
37 CFR 1.295(a), form PfOL-447.
Note that an original SIR application can be abandoned
in favor of a continuing application for a
patent, claiming the filing date of the earlier filed
application, by filing an express abandonment of the
original application and a timely request or petition to
withdraw the request for a SIR prior to publication of
the SIR.
1111 SIR Publication and Effect
37 CFR 1.297. Publication of statutory invention
registration.
(a) If the request for a statutory invention registration is
approved the statutory invention registration will be published.
The statutory invention registration will be mailedto therequester
at the correspondence address as provided for in § 1.33(a). A
notice of the publication of each statutory invention registration
will be published in the Official Gazette.
(b) Each statutory invention registration published will
include a statement relating to the attributes of a statutory invention
registration. The statement will readas follows:
A statutory invention registration is not a patent. It has
the defensive attributes of a patent but does not have the
enforceable attributes of a patent. No article or advertisement
or the like may use the term patent, or any term suggestive
of a patent, when referring to a statutory invention
registration. For more specific information on the rights
associated with a statutory invention registration see
35 U.S.C. 157.
STATUTORY INVENTION REGISTRATION 1111
Published SIRs are sequentiallynumbered in a separate
"H". series, starting with number "HI". For a
description of the "kind codes" used on other documents
published by the U.S. Patent and Trademark
Office, see MPEP § 90l.04(a).
In accordance with 35 U.S.C. 157(c), a published
SIR will be treated the same as a V.S. patent for all
defensive purposes, usable as a reference as of its filing
date in the same manner as a patent. A SIR is a
"constructive reduction to practice" under 35 U.S.c.
102(g) and "prior art" under all applicable sections of
35 V.S.C. 102 including section 102(e). SIRs are classified,
cross-referenced, and placed in the search files,
disseminated to foreign patent offices, stored in V.S.
Patent and Trademark Office computer tapes, made
available in commercial data bases, and announced in
the Official Gazette.
The waiver of patent rights to the subject matter
claimed in a statutory invention registration takes
effect on publication (37 CFR l.293(c)) and may
affect the patentability of claims in related applications
without SIR requests, such as divisional or other
continuing applications, since the waiver of patent
rights is effective for all inventions claimed in the SIR
and would effectively waive the right of the inventor
to obtain a patent on the invention claimed in the
same application or on the same invention claimed in
any other application not issued before the publication
date of the SIR. If an application containing generic
claims is published as a SIR, the waiver in that application
applies to any other related applications to the
extent that the same invention claimed in the SIR is
claimed in the other application. Examiners should
apply standards similar to those applied in making
"same invention" double patenting determinations to
determine whether a waiver by an inventor to claims
in a SIR precludes patenting by the same inventor to
subject matter in any related application. If the same
subject matter is claimed in an application and in a
published statutory invention registration naming a
common inventor, the claims in the application should
be rejected as being precluded by the waiver in the
statutory invention registration. See 37 CPR
1.l04(c)(5). A rejection as being precluded by a
waiver in a SIR cannot be overcome by a terminal disclaimer.
1100-7 August2001

1111 MANUALOF PATEN'!' EXAMINING PROCEDURE
The holder ofa SIR will not be able to file a reissue
application to recapture the rights, including the right
to exclude others from making, using, selling, offer-
August 2001 1100'S
ing to sell, or importing the invention, .that were
waived by the initial publication of the SIR.
•••••••••••••••••••••••••••••

merits of the invention .may be required to 'be' settled beforean
appeal can be considered.
(d) The time periods set forth in §§ 1.191 and 1.192 are sub,
ject to the provisions of, § 1.136 for patent applications and
§ 1.550(c) for reexamination proceedings. The time periods set
forth in §§ 1.193, 1.194, 1.196 and 1.197 are subject to the provisions
of § 1.136(b) for patent applications or § 1.550(c) for reexamination
proceedings. See § 1.304(a) for extensions of time for
filing a notice of appeal to the U.S. Court of Appeals for the Federal
Circuit or for commencing a civil action.
(e) Jurisdiction over the application or patent underreexamination
passes to the Board of Patent Appeals and Interferences
upon transmittal of the file, including all briefs and examiner's
answers, to the Board. Prior to the entry of a decision on the
appeal, the Commissioner may sua sponte order the application
remanded to the examiner.
APPEAL BY PATENT APPLICANT
Under 37 CFR 1.191(a), an applicant for a patent
dissatisfied with the primary examiner's decision in
the second or final rejection of his or her claims may
appeal to the Board for review of the examiner's
rejection by filing a notice of appeal and the required
fee set forth in 37 CFR 1.17(b) within the time period
provided under 37 CFR 1.134 and 1.136. A notice of
appeal may be filed after any of the claims has been
twice rejected, regardless of whether the claim(s) hasl
have been finally rejected. The limitation of "twice or
finally...rejected" does not have to be related to a particular
application. For example, if any claim was
rejected in a parent application, and the claim is again
rejected in a continuing application, then applicant
will be entitled to file an appeal in the continuing
application, even if the claim was rejected only once
in the continuing application.
Although the rules no longer require that the notice
of appeal identify the rejected claim(s) appealed, or be
signed, applicants should continue to file notices of
appeal which identify the appealed claims and are
signed. The requirement was eliminated from 37 CFR
1.191 as being redundant of the requirements of
37 CPR 1.192 and to avoid the delay and expense to
both applicant and the United States Patent and Trademark
Office (Office) which is involved in treating a
defective notice of appeal. It should be noted that the
elimination of the requirement to sign a notice of
appeal does not affect the requirements for other
papers (such as an amendment under 37 CPR 1.116)
submitted with the notice, or for other actions contained
within the notice, e.g., an authorization to
APPEAL
1205
charge fees to a deposit account or to a credit card.
See MPEP § 509. Thus, failure to sign the notice of
appeal may have unintended adverse consequences;
for example, if an unsigned notice of appeal contains
an (unsigned) authorization to chargethe appeal fee to
a deposit account, the notice of appeal will be unacceptable
because the appeal fee is lacking.
The notice of appeal must be filed within the period
for reply set in the last Office action, which is normally
3 months for applications. See MPEP § 714.13.
Failure to remove all grounds of rejection and otherwise
place an application in condition for allowance
or to file an appeal after final rejection will result in
the application becoming abandoned, even if one or
more claims have been allowed, except where claims
suggested for interference have been copied. The
notice of appeal and appropriate fee may be filed up
to 6 months from the date of the final rejection, so
long as an appropriate petition and fee for an extension
of time is filed either prior to or with the notice of
appeal.
APPEAL BY PATENT OWNER
37 CFR 1.191 provides for appeal to the Board by
the patent owner from any decision in an ex parte
reexamination proceeding adverse to patentability, in
accordance with 35 U.S.C. 306 and 35 U.S.C. 134.
See also MPEP § 2273.
In an ex parte reexamination of a patent that issued
from an original application filed before November
29. 1999, the patent owner may appeal to the Board
either (A) after final rejection of the claims, or (B)
after the second rejection of the claims. This is based
on the version of 35 U.S.C. 134 in existence prior to
the amendment of the reexamination statute on
November 29,1999 by Public Law 106-113.
In an ex parte reexamination of a patent that issued
from an original application filed on or after November
29, 1999, the patent owner may appeal to the
Board only after the final rejection of one or more
claims in the particular reexamination proceeding for
which appeal is sought. See the current version of
35 U.S.C. 134.
The fee for filing the notice of appeal by a patent
owner is set forth in 37 CFR 1.17(b), and the time
period to pay the fee is deterruined as provided in 37
CPR 1.134 and 37 CPR 1.136.
1200-3 August2001

1205 MANUAL OF PATENT EXAMINING PROCEDURE
Failure to file an appeal in an ex parte reexamination
proceeding will result in issuance of the reexamination
certificate under 37 CFR 1.570.
Appeals to the Board of Patent Appeals and Interferences
in inter partes reexamination proceedings
filed under 35 U.S.C. 311 are governed by 37 CPR
August 2001 1200-4
1.959 through 1.981. 37 CFR 1.191 through 1.198 are
not applicable to appeals in inter partes reexamination
proceedings.
The use of a separate letter containing the notice of
appeal is strongly recommended. Form PfO/SB/3l
may be used for filing a notice of appeal.

1206 MANUALOF PATENT EXAMINING PROCEDURE
MATTERS HANDLED
WITHAPPEAL
CONCURRENTLY
The Office does not acknowledge receipt of a
notice of appeal by separate letter. However, if a selfaddressed
postcard is included with the notice of
appeal, it will be date stamped and mailed.
Form paragraphs 12.01-12.04 may be used to indicate
defects in a notice of appeal.
'f[ 12.01 Notice ofAppeal Unacceptable - Fee Unpaid
The notice of appeal filed on [1] is not acceptable because the
appeal fee required under 37 CFR 1.17(b) was not filed, or was
not timely filed.
Applicant may obtain an extension of time under 37CFR
1.I36(a) to file the appropriate appeal fee. The date on which the
notice of appeal, the appeal fee, the petition under 37 CPR
1.I36(a), and the petition fee are filed will be the date of the reply
and also the date for determining the period of extension and the
corresponding amount of the fee. In no case mayan applicant
reply later than the maximum SIX MONTH statutory period or
obtain an extension pursuant to 37 CPR 1.136(a) for more than
FIVE MONTHS beyond the date of reply set in an Office action.
'f[ 12.02 Notice ofAppeal Unacceptable - No 2nd Rejection
The notice of appeal filed on [II is not acceptable under 37
CPR 1.I91(a) because [21.
Examiner Note:
In bracket 2, insert the following wording, as appropriate:
--there has been no second or final rejection in this patent
application--;
--there has been no second or final rejection in this ex
parte reexamination proceeding on a patent that issued from an
original'application filed in the United,States before November
29, 1999--; or
-cthere has been no final rejection (37 CFR 1.113) of the
claims in this ex parte reexamination proceeding on a patent that
issued from an original application filed in the United States on or
after November 29, 1999--.
'J! 12.03 Notice ofAppeal Unacceptable - Not Timely Filed
The notice of appeal filed on [1] is not acceptable because it
was filed after the expiration of the period set in the prior Office
action. This application will become abandoned unless applicant
obtains an extension under 37 CFR 1.136(a). The date on which
the notice of appeal, the appeal fee, the petition under 37 CFR
1.136(a), and the petition fee under 37 CPR 1.17(a) are filed will
be the date of the reply and also the date 'for determining the
period of extension and the corresponding amount 'of the fee. In
no case may an applicant reply,later than, the maximum SIX
MONTH statutory period orobtain an extension pursuant to 37
CPR 1.136(a) for more than FIVE MONTHS beyond the date of
reply set in an Office action.
August 2001
1200-6
'f[ 12.04 Notice ofAppeal Unacceptable - Claims Allowed
The notice of appeal filed on [1] is not acceptable because a
notice of allowability was mailed by the Office on [2].
1206 Appeal Brief
37 CFR 1.192. Appellant's brief
(a) Appellant must, within two months from the date of the
notice of appeal under § 1.191 or within the time allowed for reply
to the action from which the appeal was taken, if such time is later,
flle a brief in triplicate. The brief must be accompanied by the fee
'set forth in § 1.17(c) and must set forth the authorities and arguments
on which appellant will rely to maintain the appeal. Any
arguments or authorities not included in the brief will be refused
consideration by the Board of Patent Appeals and Interferences,
'unless good cause is shown.
(b) On failure to file the brief, accompanied by the requisite
fee, within the time allowed, the appeal shall stand dismissed.
(c) The brief,shall contain the following items under appropriate
headings and in the order indicated below unless the brief is
filed by an applicant who is not represented by a registered practitioner:
(1)' Real party in interest. A statement identifying the real
party in interest; if the party named in the caption of the brief is
not the real party in interest.
(2) Related appeals and interferences. A statement identifying
by number and filing date all other appeals or interferences
known to appellant, the appellant's legal representative, or
assignee which will, directly' affect or be, directly affected by or
have a bearing on the Board's decision in the pending appeal.
(3) Status of claims. A statement of the status of all the
claims, pending or cancelled, and identifying the claims appealed.
(4) Status ofamendments.'A statement of the status of any
amendment filed subsequent to final rejection.
(5) Summary of invention. A concise explanation of the
invention defined in the claims involved in the appeal, which shall
refer to the specification by page and line number, and to the
drawing, if any, by reference characters.
(6) Issues. A concise statement of the issues presented for
review.
(7) Grouping of claims. For each ground of rejection
which appellant contests and which applies to a group of two or
more claims, the Board shall select a single claim from the group
and shall decide the appeal as to the ground of rejection on the
basis of that claim alone unless a statement is included that the
claims of the group do not stand or fall together and, in the argument
under paragraph (c)(8) of this section, appellant explains
why the claims of the group are believed to be separately patentable.
Merely pointing out differences in what the claims cover is
not an argument as to why thecIaims are separately patentable.
(8) Argument. The contentions of appellant with respect
to each of the issues presented for review in paragraph (c)(6) of
this section, and the basis therefor, with citations of the authorities,
statutes, and parts of the record relIed on. Each issue should
be treated under a separate heading.

1206 MANUAL OF PATENT EXAMINING PROCEDURE
corresponding to the lost count or counts will stand
finally disposed of under 37 CFR 1.663.
When an application is revived after abandonment
for failure on the part of the appellant to take appropriate
action after final rejection, and the petition to
revive was accompanied by a notice of appeal, appellant
has 2 months, from the mailing date of the Comntissioner's
affirmative decision on the petition, in
wltich to file the appeal brief. The time period for filing
the appeal brief may be extended under 37 CFR
1.136.
With the exception of a declaration of an interferenceor
suggestion of claims for an interference and
timely copying of claims for an interference, the
appeal ordinarily will be disntissed if the brief is not
filed within the period provided by 37 CFR1.192(a)
or within such additional time as may be properly
extended.
A brief must be filed to preserve appellant's right to
the appealed claims, notwithstanding circumstances
such as:
(A) the possibility or imminence of an interference
involving the subject application, but not resulting
in withdrawal of the final rejection prior to the
brief's due date;
(B) the filing of a petition to invoke the supervisory
authority of the Comntissioner under 37 CFR
1.181;
(C) the filing of an amendment, even if it is one
which the examiner previously has indicated may
place one or more claims in condition for allowance,
unless the examiner, in acting on the amendment, disposes-of
all issueson appeal;
(D) the receipt of a letter from the examiner stating
that prosecution is suspended, without the examiner
withdrawing the final rejection from which
appeal has been taken or suggesting claims for an
interference, and without an administrative patent
judge declaring an interference with the subject application.
Although failure to file the brief within the permissible
time will result in disntissal of the appeal, if any
claims stand allowed, the application does not become
abandoned by the disntissal, but is returned to the
exantiner for action on the allowed claims. See MPEP
§ 1215.04. If there are no allowed claims, the applica-
August2001 1200-8
tion is abandoned as of the date the brief was due.
Claims which have been objected to as dependent
from a rejected claim do not stand allowed. In a reexantination
proceeding failure to file the brief will
result in the issuance of the certificate under 37 CPR
1.570.
If the time for filing a brief has passed and the
application has consequently become abandoned, the
applicant may petition to revive the application, as in
other cases of abandonment, and to reinstate the
appeal; if the appeal is dismissed, but the application
is not abandoned, the petition would be to reinstate
the claims and the appeal, but a showing equivalent to
that in a petition to revive under 37 CFR 1.137 is
required. In either event, a proper brief must be filed
before the petition will be considered on its merits.
Where the disntissal of the appeal is believed to be
in error, filing a petition, pointing out the error, may
be sufficient.
A fee under 37 CPR l.17(c) is required when the
brief is filed. 37 CPR 1.192(a) requires the subntission
of three copies of the appeal brief.
APPEAL BRIEF CONTENT
The brief, as well as every other paper relating to an
appeal, should indicate the number of the Technology
Center (TC) to wltich the application or patent under
reexantination is assigned and the application or reexamination
control number. When the brief is received,
it is forwarded to the TC where it is entered in the file,
and referred to the examiner.
An appellant's brief must be responsive to every
ground of rejection stated by the examiner.
Where an appeal brief fails to address any ground
of rejection, appellant shall be notified by the examiner
that he or she must correct the defect by filing a
brief (in triplicate) in' compliance with 37 CFR
1.192(c). See 37 CFR 1.192(d). Form paragraphs
12.76-12.76.06 and 12.78, or form PTOL-462, "Notification
of Non-Compliance with 37 CFR 1.192(c),"
may be used to notify the appellant of the deficiency.
Oral argument at a hearing will not remedy such deficiency
of a brief. The fact that appellant may consider
a ground to be clearly improper does not justify a failure
to point out to the Board the reasons for that
belief.

The mere filing of paper entitled as a brief will
not necessarily be considered to be in compliance
with 37 CPR 1.192(c). The rule reqnires that the brief
must set forth the authorities and arguments relied
upon. Since it is essential that the Board should be
provided with a brief fully stating the position ofthe
appellant with respect to each issue involved in the
appeal so that no search .of the record is required in
order to determine that position, 37 CPR 1.192(c)
requires that the briefcontain specific items, as. dis"
cussed below.
An exception to the requirement that all the items
specified in 37 CPR 1.192(c) be included in the brief
is made if the application. or reexamination proceed"
ing is being prosecnted by the appellant prose, i.e.,
there is no attorney or agent of record, and the brief
was neither prepared nor signed by a registered attorney
or agent. The brief of a pro se appellant which
does not contain all of the items, (I) to (9), specified
in 37 CPR 1.192(C)will be accepted as long as it sub"
stantially complies with the requirements of items (I),
(2), and (8). If the brief of a pro se appellant is
accepted, it will be presumed that all the claims of a
rejected group of claims stand or fall together nnless
an argument is included in the brief that presents rea"
sons as to why the appellant considers one or more of
the claims in the rejected group to be separately pat"
entable from the other claims in the group.
A distinction must be made between the lack of any
argument and the presentation of argnments which
carry no conviction. In the former case, notification
of a defective appeal brief is in order, while inthe.latter
case, the application or reexamination is forwarded
to the Board for a decision on the merits. As noted
above, the examiner may use form paragraphs 12.76"
12.76.06 and 12.78, or form PTOL"462, "Notification
of Non-Compliance with.37 CPR 1.192(c)," to notify
appellant that the appeal brief is defective.
If in his or her brief, appellant relies on some refer"
ence, he or she is expected to provide the Board with
three copies of it.
The specific items required by 37 CPR 1.192(c)
are:
(I) Real party in interest. A statement identifying
the real party in interest, if the party named in the caption
of the brief is not the real party in interest. If
appellant does not name a real party in interest, the
examiner will assume that the party named in the cap"
APPEAL
1200"9
1206
tion of the brief is the real party in interest, i.e., the
owner at the time the brief is being filed.
The identification of the real party in interest will
allow members of the Board to comply with ethics
regulations associated with working in matters in
which the member has a financial interest to avoid
any potential conflict of interest. While the examiner
will assume that the real party in interest is the individual
or individuals identified in the caption when
the real party in interest is not explicitly set outin the
brief, nevertheless, the Board may require the appellant
to explicitly name the real party in interest. See
MPEP§121O.01.
(2) Related appeals and interferences. A''statement
identifying by application number and filing date all
other appeals or interferences known to appellant, the
appellant's legal representative, or assignee which
will directly affect or be directly affected by or.have a
bearingon the Board's decision in the pendingappeal.
The appeal or interference number should also. be
listed. The statement is not limited to copending
applications. If appellant does not identify any other
appeals or interferences, the examiner will presume
that there are none. While the examiner will assume
that there are no related cases When no related case is.
explicitly setout in the brief, nevertheless, the Board
may require the appellant to explicitly identify any
related case. See MPEP § 1210.01.
(3) Status ofClaims. A statement of the status of all
the claims in the application, or patent under reexamination,
i.e., for each claim in the case, appellant must
state whether it is cancelled, allowed, rejected, etc.
Each claim on appeal must be identified.
(4) Status ofAmendments. A statement of the status
of any amendment filed subsequent to final rejection,
i.e., whether or not the amendment has been acted
upon by the examiner, and if so, whether it was
entered, denied entry, or entered in part. This state"
ment should be of the status of the amendment as
understood by the appellant.
Items (3) and (4) are included in 37 CPR 1.192(c)
to avoid confusion as to which claims are on appeal;
and the precise wording of those claims, particularly
where the appellant has sought to amend claims
after final rejection. The inclusion of items (3) and (4)
in the brief will. advise the examiner of what
theappellant considers the status of the claims and
post-final rejection amendments to be, allowing any
August 2001

1206 MANUAL OF PATENTEXAMINING PROCEDURE
disagreement on these questions to be resolved before
the appeal is taken up for decision.by the Board.
(5) Summary ofInvention. A concise explanation of
the invention defined in the claims involved in the
appeal. This explanation is required to refer to the
specification by page and line number,and,if there is
a drawing, to the drawing by reference characters,
Where applicable, it is preferable to read the appealed
claims on the specification and any drawing. While
reference to page and line number of the specification
may require somewhat more detail than simply Sum'
marizing the invention, it is considered important to
enable the Board to more quickly determine where the
claimed subject matter is described in the application.
(6) Issues. A concise statement of the issues presented
for review. Each stated issue should correspond
to a separate ground of rejection which
appellant wishes the Board of Patent Appeals and
Interferences to review. While the statement of the
issues mnst be concise, it should not be so concise as
to omit the basis of each issue. For example, the statement
of an issue as "Whether claims I and 2 are
unpatentable" would not comply with 37 CFR
U92(c)(6). Rather, the basis of the alleged unpatentability
would have to be stated, e.g., "Whether claims
I and 2 are unpatentable under 35 U.S.C. 103 over
Smith in view of Jones," or "Whether claims 1 and 2
are unpatentable under 35 U.S.C. 112, first paragraph,
as being based on a nonenabling disclosure." The
statement would be limited to the issues presented,
and should not include any argument concerning the
merits ofthose issues.
(7) Grouping of Claims. For each ground of rejection
which appellant contests and which applies to a
group of two or more claims, the Board shall select a
single claim from the group and shall decide the
appeal as to the ground of rejection on the basis of
that claim alone, unless a statement isinclnded that
the claims of the group do not stand or fall together
and, in the argument section of the brief (37 CFR
U92(c)(S)), appellant explains why the claims of the
group are believed to be separately patentable. Merely
pointing out differences in what the claims cover is
not an argument as to why the claims are separately
patentable. If an appealed ground of rejection applies
to more than one claim and appellant considers the
rejected claims to be separately patentable, 37 CFR
U 92(c)(7) requires appellant to state that the claims
August2001
1200-10
do not stand or fall together, and to present in the
appropriate part or parts of the argument under 37
CFR U92(c)(S) the reasons why they are considered
separately patentable.
The absence of such a statement and argument is a
concession by the applicant that, if the ground of
rejection were SUStained as to anyone of the rejected
claims, it will be equally applicable to all of them. 37
CFR U 92.(c)(7) is consistent with the practice of the
Court of Appeals for the Federal Circuit indicated in
such cases as In re Young, 927 F.2d 58S, 18 USPQ2d
1089 (Fed. Cir. 1991); In re Nielson, 816 F.2d 1567,
2 USPQ2d 1525 (Fed. Cir. 1987); In re King, 801 F.2d
1324, 231 USPQ 136 (Fed. Cir. 1986); and In re Sere
naker, 702 F.2d989, 217 USPQ 1 (Fed. Cir. 1983).
37 CPR U 92(c)(7) requires the inclusion of reasons
in order to avoid unsupported assertions of separate
patentability. The reasons may be included in the
appropriate portion of the "Argument" section of the
brief. For example, if claims I to 4 ate rejected under
35 U.S.C. 102 and appellant considers claim 4 to be
separately patentable from claims I to 3, he or she
should so state in the "Grouping of claims" section of
the brief, and then·give the reasons for separate patentability
in the 35 U.S.C. 102 portion of the "Argument"
section (i.e., under 37 CPR U92(c) (S) (iii)).
In the absence of a separate statement that the
claims do not stand or fall together, the Board panel
assigned to the case will normally select the broadest
claim in a group and will consider only that claim,
even though the group may contain two broad claims,
such as "ABCDE" and "ABCDF." The same would
be true in a case where there ate both broad method
and apparatus claims on appeal in the same group.
The rationale behind the rnle, as amended, is to make
the appeal process as efficient as possible. Thus, while
the Board will consider each separately argued claim,
the work of the Boatd can be done in a more efficient
manner by selecting a single claim from a group of
claims when the appellant does not meet the requirements
of 37 CPR U92(c)(7).
It should be noted that 37 CPR 1.192(c)(7) requires
the appellant to perform two affirmative acts in his or
her brief in order to have the separate patentability of
a plurality ofclaims subject to the samerejection considered.
The appellant must (A) state that the
claims do not stand or fall together and (B) present
arguments why the claims subject to the same rejec-

tion are separately patentable. Where the appellant
does neither, the claims will be treated as standing or
falling together. Where, however, the appellant (A)
omits the statement required hy 37 CFR 1.192(c)(7)
yet presents arguments in the argument section of the
brief, or (B) includes the statement required by
37 CPR 1.192(c)(7) to the effect that one or more
claims do not stand or fall together (i.e., that they are
separately patentable) yet does not offer argument in
support thereof in the "Argument" section of the brief,
the appellant should be notified of the noncompliance
as per 37 CFR l.192(d). Ex parte Schier, 21 USPQ2d
1016 (Bd. Pat. App. & Int. 1991); Ex parte Ohsumi,
21 USPQ2d 1020 (Bd. Pat. App. & Int. 1991).
(8) Argument. The appellant's Contentions with
respect to each of the issues presented for review in
37 CPR l.192(c) (6), and the basis for those contentions,
including. citations of authorities, statutes, and
parts of the record relied on, should be presented in
this section.
Included in this paragraph are five subparagraphs,
(i) to (v). Subparagraphs (i) to (iv) concern the
grounds of rejection most commonly involved in ex
parte appeals, namely, 35 U.S.C. 112,first and second
paragraphs, 35 U.S.C. 102, and 35 U.S.c. 103. Sub'
paragraph (v) is a general provision concerning
grounds of rejection not covered by subparagraphs (i)
to (iv).
The purpose of subparagraphs (i) to (iv) is toensure
that the appellant's argument concerning each
appealed ground ofrejection will include a discussion
of the questions relevant to that ground. Compliance
with the requirements of the particular subparagraphs
which are pertinent to the grounds. of .rejection
involved in an appeal will be beneficial both to the
U. S. Patent and Trademark Office and appellants. It
will not only facilitate a decision by the Board of
Patent Appeals arid Interferences by enabling the
Board to determine more quickly and precisely the
appellant's position on the relevant issues, but also
will help appellants to focus their arguments on those
issues.
For each rejection not falling under subparagraphs
(i) to (iv), subparagraph (v) provides that the argument
should specify the specific liruitations ill the
rejected claims, if appropriate, or other reasons, which
cause the rejection to be in error. This language recognizes
that for some grounds of rejection, it may not be
APPEAL 1206
necessary to specify particular claim limitations, for
example, a rejection under 35 U.S.c. 101, on the
ground that the claims are directed to nonstatutory
subject matter, as in Ex parte Hibberd, 227 USPQ 443
(Bd. Pat. App. & Inter. 1985).
37 CPR l.192(a) contains thefollowing sentence:
Any' arguments or authorities not included in thebrief will
be refused consideration bytheBoard of Patent Appeals and
Interferences, unless goodcauseis shown.
This sentence emphasizes that all arguments and
authorities which an appellant wishes the Board to
consider should be included in the brief. It should he
noted that arguments not presented in the brief and
made for the first time at the oral hearing are not normally
entitled to consideration. In re Chiddix, 209
USPQ 78 (Comm'r Pat. 1980); Rosenblum v.
Hiroshima,220 USPQ 383 (Comm'rPat, 1983).
37 CPR 1.l92(a) is not intended to preclude the filing
of a supplemental paper if new authority should
become available Or relevant after the brief was filed;
An example of such circumstances would be where a
pertinent decision of a court or other tribunal was not
published until after the brief was filed. '
(9) Appendix. An appendix containing a copy of the
claims involved in the appeal.
The copy of the claims required in the brief Appendix
by37 CFR l.192(c)(9) should be a clean copy and
should not include any markings such as brackets or
underlining. See MPEP § 1454 for the presentation of
the copy of the claims in a reissue application.
The copy of the claims should be double spaced
and the appendix should start 01). a new page.
37 CFR 1.192(c) merely specifies the minimum
requirements for a brief, and does not prohibit the
inclusion of any other material which an appellant
may consider necessary or desirable, for example, a
list of references, table of contents, table of cases, etc.
A brief is in compliance with 37 CPR 1.192(c) as long.
as it includes items (I) to (9) in the order set forth
(with the appendix, item (9), at the end).
REVIEW OF BRIEF BY EXAMINER
The question of whether a brief complies with the
rule is a matter within the jurisdiction of the examiner,
37 CFR l.192(d) provides that if a brief is filed which
does not comply.with all the requirements of paragraph
(c), the appellant will be notified of the reasons
for noncompliance. Appellant will be given the long-
1200-11 August2001

1206 MANUAL OF PATENT EXAMINING PROCEDURE
est of any of the following time periods to correct the
defect(s):
(A) 1 month or 30 days from the mailing of the
notification of non-compliance, whichever is longer;
(B) within the time period for reply to the action
from which appeal has been taken; or
(C) within 2 months from the date of the notice of
appeal under 37 CFR 1.191.
Extensions of time may be granted under 37 CPR
1.136(a) or 1.136(b). The examiner may use the form
paragraphs set forth below or form PTOL-462, "Notification
of Non-Compliance with 37 CFR 1.192(c),"
to notify appellant that the appeal brief is defective.
The appeal will be dismissed if the appellant does not
timely file an amended brief, or files an amended brief
which does not overcome all the reasons for noncompliance
of which the appellant was notified.
Under 37 CFR 1.192(d), the appellant may file an
amended brief to correct any deficiencies in the original
brief. Moreover, if appellant disagrees with the
examiner's holding of noncompliance, a petition
under 37 CFR 1.181 may be filed.
Once the brief has been filed, a petition to suspend
proceedings may be considered on its merits, but will
be granted only .in exceptional cases, such as where
the writing of the examiner's answer would be fruitless
or the proceedings would work an unusual hardship
on the appellant.
For a reply brief, see MPEP § 1208.03.
Form paragraphs 12.08-12.13, 12.16, 12.17, and
12.69-12.78, or Form PfOL-462, "Notification of
Non-Compliance with 37 CFR 1.192(c)," may be
used concerning the appeal brief.
'f[ 12.08 Appeal Dismissed - BriefFee Unpaid. No Allowed
Claims
The appeal under 37 CPR 1.191 is dismissed because the fee
for filing the brief, as required under 37 CPR l.l7(c) was not
submitted or timely submitted and the period for obtaining an
extension of time to file the brief under 37 CFR 1.136(a) has
expired.
As a result of this dismissal, the application is ABANDONED
since there are no allowed claims.
Examiner Note:
Claims which have been indicated as containing allowable subject
matter, but are objected to as being dependent upon a rejected
claim, are to be considered as ifthey were rejected. See MPEP §
1215.04.
August 2001
1200-12
'f[ 12.09 Appeal Dismissed - Brief Fee Unpaid, Allowed
Claims
The appeal under 37 CPR 1.191 isdismissed because the fee
for filing the appeal brief, as required under 37 CFR 1.17(c), was
not submitted or timely submitted and the period for obtaining an
extension of time to file the brief under 37 CFR 1.136(a) has
expired.
As a result of this dismissal, the application will be further processed
by the examiner since it contains allowed claims. Prosecution
on the merits remains CLOSED.
Examiner Note:
Claims which have been indicated as containing allowable subject
matter, but are objected to as being dependent upon a rejected
claim, are to be considered as if they were rejected. See MPEP §
1215.04.
'f[ 12.09.01 Appeal Dismissed - Allowed Claims, Formal
Matters Remaining
In view of applicant's failure to file a brief within the time prescribed
by 37 CPR 1.192(a), the appeal stands dismissed and the
proceedings as to the rejected claims are considered terminated.
See 37 CPR 1.197(c).
This application will be passed to issue on allowed claim [1]
provided the following formal matters are corrected. Prosecution
is otherwise closed.
[2]
Applicant is required to make the necessary corrections within
a shortened statutory period set to expire ONE MONTH or
THIRTY DAYS, whichever is longer, from the mailing date of
this letter. Extensions of time may be granted under 37 CFR
1.136.
Examiner Note:
1. This form paragraph should only be used if the formal matters
cannot be handled by examiner's amendment. See MPEP §
1215.04.
2. In bracket 2, insert a description of the formal matters to be
corrected.
3. Claims which have been indicated as containing allowable
subject matter but are objected to as being dependent upon a
rejected claim are to be considered as if they were rejected. See
MPEP § 1215.04.
'f[ 12.10 Extension To File Brief- Granted
The request for an extension of time under 37 CPR 1.136(b) for
filing the appeal brief under 37 CPR 1.192 filed on [1] bas been
approved for [2].
Examiner Note:
This form paragraph should only be used when 37 CFR
1.136(a) is not available or has been exhausted, such as in litigation
reissues.
'f[ 12.11 Extension To File Brief- Denied
The request for an extension of time under 37 CFR 1.136(b) for
filing the appeal brief under 37 CPR 1.192 filed on [1] bas been
disapproved because no sufficient cause for the extension has
been shown.
P,##J;w",i::'"" .

1208 MANUAL OF PATENT EXAMINING PROCEDURE
amendment under § 1.116 would be entered for purposes of
appeal and which individual rejection(s) set forth in the.action
from which the appeal was taken would be used to .reject the
added or amended claim(s), thentheappeal briefmustaddress the
rejection(s) of-theclaim(s) addedor amended by the amendment
under § 1.116 as appellant was so advised and the examiner's
answer may include the rejection(s) of the claim(s) added or
amended by the amendment under § 1.116 as appellant was so
advised. The filing of an amendment under § 1.116 which is
entered for purposes of appeal represents appellant's consent that
when so advised any appeal proceed on those claim(s) added or
amended by-the amendment under§ 1.116SUbject to anyrejection
set forth in theaction from whichtheappeal was taken.
(b)(I) Appellant may file a reply brief to an examiner's
answer or a supplemental examiner's answer within two months
from the date of such examiner's answer or supplemental examiner's
answer. See § 1.136(b) for extensions of time for filing a
reply brief in a patent application and § 1.550(c) for extensions of
time for filing a reply brief in a reexamination proceeding. The
primary examiner must either acknowledge receipt and entry of
thereply briefor withdraw thefinalrejection and reopen prosecution
to respond to the reply brief. A supplemental examiner's
answeris not permitted, unless the application has been remanded
by the Board of Patent Appeals and Interferences for such purpose.
(2) Where prosecution is reopened by the primary examinerafter
an appeal or reply brief has been filed, appellant must
exercise one of the following two options to avoid abandonment
of the application:
(i) File a reply under § 1.111, ifthe Office action is
notfinal,or a replyunder § 1.113,if theOffice actionisfinal; or
(ii) Request reinstatement of the appeal. If reinstatement
of the appeal is requested, suchrequest mustbe accompaniedby
a supplemental appeal brief,' but no new amendments,
affidavits (§§ 1.130, 1.131 or 1.132) or other evidence are permit­
ted.
APPEAL CONFERENCE
An appeal conference is mandatory in all cases in
which an acceptable brief (MPEP § 1206) has been
filed, However, if the examiner charged with the
responsibility of preparing the examiner's answer
reaches a conclusion thai the appeal should not go for'
ward and the supervisory patent examiner (SPE)
approves, then no appeal conference is necessary.
The participants of the appeal conference should
include (1) the examiner charged with preparation of
the examiner's answer, (2) a supervisory patenl examiner
(SPE), and (3) another examiner, known as a conferee,
having sufficienl experience to be"ofassistance
in the consideration of the merits of the issues on
appeal. During the appeal conference, consideration
should be given to Ihe possibility of dropping cumula-
August2001 1200-16
tiveart rejeclions and eliminating technical rejections
of doubtful value,
The examiner responsible for preparing the examiner's
answer should weigh the arguments of the other
examiners presented during the appeal conference. If
it is determined that the rejection(s) should be maintained,
the examiner responsible for preparing the
examiner's answer will prepare the examiner's
answer.
On the examiner's answer, below the primary
examiner's signature, the word "Conferees:" should
be included, followed by the typed or printed names
of the other two appeal conference participants. These
two appeal conference participants must place their
initials next to their name. This will make the record
clear that an appeal conference has been held.
Upon receipt of the appeal case by the Board of
Patenl Appeals and Interferences (Board), the Board
should review the application prior to assigning an
appeal number to determine whether an appeal conference
has been held. If the examiner's answer does
not contain the appropriate indication that an appeal
conference has been held (i.e, including the names of
the conferees and identifying themselves as the conferees
along with their initials), the Board should
return the application directly 10 the appropriate Technology
Center (TC) Director for corrective action.
This return procedure by the Board should not be considered
as a remand of the application, This procedure
applies to all examiner's answers received by the
Board on or afler November 1, 2000.
Before preparing the answer, the examiner should
make certain thai all amendments approved for entry
have in faci been physically entered. The Clerk of the
Board will return to the TC any application in which
approved amendments have not been entered.
ANSWER
The examiner should furnish the appellant with a
wrilten statement in answer to the appellant's brief
within 2 months afler the receipt of the brief by the
examiner.
The answer should contain a response to Ihe allegations
or arguments in the brief and should call attention
to any errors in appellant's copy of the claims. If
any rejection is withdrawn, the withdrawal should be
clearly staled in the examiner's answer under
"Issues," Grounds of rejection not argued in the

'f[ 12.51.08 Claims Objected To
Claim [1] objected to as being dependent upon a- rejected base
claim, but would be allowable if rewritten in independent form
including all of the limitations of the base claim and any intervening
claims.
Examiner Note:
All objected to claims must be.identified ifthe briefincorrectly
lists any claims objected to.
'f[ 12.51.09 Claims Withdrawn From Consideration
Claim [1] withdrawn from consideration as not directed to the
elected [2].
Examiner Note:
All withdrawn claims must be identifiedif the brief incorrectly
lists any withdrawn claims.
'f[ 12.51.10 Claims Canceled
Claim [1] been canceled.
Examiner Note:
All canceled claims must be identified ifthe brief incorrectly
lists any canceled claims.
'f[ 12.52 Status ofAmendments After Final
(4) StatusofAmendments After Final
Examiner Note:
Identify status of .all amendments submitted after, final, rejection.
'Use one or more of form paragraphs 12.52.01 to 12.52.04, if
appropriate.
'f[ 12.52.01 Agreement With Appellant's Statement of the
Status ofAmendments After Final
The appellant's statement of the status of amendments after
final rejection contained in the-brief is correct.
'f[ 12.52.02 DisagreementWith Appellant's Statement ofthe
Status ofAmendments After Final
The appellant's statement of the status of amendments after
final rejection contained in the brief is incorrect.
Examiner Note:
Form paragraphs 1252.03 and/or 12.52.04 must follow this
form paragraph to explain the reasons for disagreeing with appellant's
statement of the status of the amendments.
'f[ 12.52.03 AmendmentAfter Final Entered
The amendment after final rejection filed on [1] has been
entered.
Examiner Note:
I. In bracket I, insert the filing date of any entered after final
amendment.
2. Use this form paragraph for each after final amendment
which has been entered.
'f[ 12.52.04 Amendment After Final Not Entered
.The amendment after fmal rejection filed on [1] has not been
entered.
APPEAL
1208
Examiner Note:
I. In bracket I, insert the date of any after final amendment
denied entry.
2. Use this form paragraph for each after final amendment'
which has been denied entry;
'f[ 12.52.05 No Amendments After Final
No amendment after final has been filed.
'f[ 12.53 Summary ofInvention
(5) Summary-ofInvention
Examiner Note:
Follow this form paragraph with either of form paragraphs
1253.Ql or 12.53.02.
'f[ 12.53.01 Agreement With the Summary ofInvention
The summary_of invention contained in-the brief is correct.
'f[ 12.53.02 Disagreement With the Summary ofInvention
The summary of invention contained in the brlef'is deficient
because [1].
Examiner Note:'
In bracket I, -explain the deficiency of the appellant's summary
of the invention.. Include-a correct summary of the invention if
necessary for a clear understanding of the claimed_invention.
'f[ 12.541ssues
(6) Issues
Examiner Note:
Follow this forrri paragraph with form paragraphs 12.54.01,
12.54.02, or 12.54.03:
'f[ 12.54.01 Agreement With Appellant's Statement of the
Issues
The appellant's statement of the issues in the brief is correct.
'f[ 12.54.02 DisagreementWith Appellant's Statement ofthe
Issues
The appellant's statement of the issues in the brief is substantially
correct. The changes are as follows: [1]
Examiner Note:
In bracket I, explain the changes with respect to the appellant'S'
statement of the issues in the brief including:
(i) an identification of any issues which are petitionable
rather than appealable, and/or
(ii) an identification of any issues or grounds of rejection
on appeal which the examiner no longer considers applicable,
and/or
(iii) any change not covered in (i) or (ii).
'f[ 12.54.03 Non-Appealable Issue in Brief
Appellant's brief presents arguments relating to [1]. This issue
relates to petitionable subject matter under 37 CFR L181 and not
to appealable subject matter. See MPEP § 1002 and § 1201.
1200-21 August 2001

1208 MANUAL OF PATENT EXAMINING PROCEDURE
'If 12.55 Grouping ofClaims
(7) GroupingofClaims
Examiner Note:
Follow this form paragraph with either form paragraph
12.55.01, 12.55.02 or 12.55.04 for each grouping nf claims (i.e.,
each ground of rejection which appellant contests).
'If 12.55.01 No Statement and Reasons in BriefThat Claims
Do Not Stand or Fall Together
The rejection of claims [1] stand or fall together because appellant's
brief does not include a statement that this grouping of
claims does not stand or fall together and reasons in support
thereof. See 37 CPR 1.192(c)(7).
Examiner Note:
1. Use this form paragraph for each grouping of claims (i.e.,
ground of rejection which appellant contests) wherein the brief
includes neither a statement that a grouping of claims does not
stand or fall together nor reasons in support thereof.
2. If the brief includes a statement' that a grouping of claims
does not stand or fall together but does not provide reasons, asset
forth in 37 CFR 1.192(c)(7), notify appellant of the non-compliance
using form paragraphs 12.69, 12.69.01 and 12.78.
'If 12.55.02 No Agreement WIth Brief Why Claims Do Not
Stand or Fall Together
The appellant's statement in the brief that certain claims do not
stand or fall together is not agreed with because [1].
Examiner Note:
In bracket 1, explain why the claim grouping listed in the brief
is not agreed with by the examiner and why, if appropriate, e.g.,
the claims as listed by the appellant are not separately patentable.
'If 12.55.04 BriefGives Reasons Why Claims Do Not Stand
or Fall Together
Appellant's brief includes a statement that claims [1] do not
stand or fall together and provides reasons as set forth in 37 CFR
1.192(c)(7) and (c)(8).
'If 12.56 Claims Appealed
(8) ClaimsAppealed
Examiner Note:
Follow this form paragraph with form paragraph 12.56.01,
12.56.02 or 12.56.03.
'If 12.56.01 Copy of the Appealed Claims in Appendix Is
Correct
The copy of the appealed claims contained in the Appendix to
the brief is correct.
'If 12.56.02 Copy of the Appealed Claims in Appendix Is
Substantially Correct
A substantially correct copy of appealed claim [1] appears on
page [2] ofthe Appendix to the appellant's brief. The minor errors
are as follows: [3]
August 2001 1200-22
Examiner Note:
1. In bracket 1; indicate the claim or claims with small errors.
2. In bracket 3, indicate the nature of the errors.
'If 12.56.03 Copy of the Appealed Claims in Appendix
Contain Substantial Errors
Claim [1] contain(s) substantial errors as presented in the
Appendix to the brief. Accordingly, claim [2] correctly written in
the Appendix to the Examiner's Answer.
Examiner Note:
1. Appellant should include a correct copy of all appealed
claims in the Appendix to the brief. See 37 CPR 1.192(c)(9).
2. Attach a correct copy of any incorrect claims as an Appendix
to the Examiner's Answer and draw a diagonal line in pencil
through the incorrect claim in the Appendix of the appellant's
appeal brief.
3. Rather than using this form paragraph, if the errors in the
claim(s) are significant, appellant should be required to submit a
corrected brief using form paragraphs 12.69, 12.77 and 12.78, as
well as any other paragraphs 12.70 to 12.76 as may be appropriate.
Where the brief includes arguments directed toward the
errors, a corrected brief should always be required.
'If 12.57 Prior Art ofRecord
(9) PriorArt ofRecord
Examiner Note:
. Follow .this form paragraph with either form paragraph
12.57.01 or 12.57.02.
'If 12.57.01 No Prior Art Relied Upon
No prior art is relied upon by the examiner in the rejection of
the claims under appeal.
'If 12.57.02 Listing ofthe Prior ArtofRecord Relied Upon
The following is a listing of the prior art of record relied upon
in the rejection of claims under appeal.
Examiner Note:
1. Use the following format for providing information on-each
reference cited:
Number Narne Date
2. The following are example formats for listing reference citations:
2,717,847 VERAIN 9-1955
1,345,890 MUTHER (Fed. Rep. of Germany) 7-1963
(Figure 2 labeled as Prior Art in this document) ..
3. See MPEP § 707.05(e) for additional examples.
'If 12.59 Grounds ofRejection
(10) GroundsofRejection
The following ground(s) of rejection are applicable to the
appealed claims:
Examiner Note:
Explain each ground of rejection or refer to the single prior
Office action which clearly sets forth the rejection and complies
with appropriate paragraphs i-vi below:

1208.01 MANUAL OF PATENT EXAMINING PROCEDURE
examiner should include a statement that he/she will
attend the hearing: (A) as the last paragraph of the
examiner's answer, if appellant's request for an oral
hearing has been made before or with the brief, or (B)
in an acknowledgement of the reply brief or in a separate
letter on form PTOL-90, if appellant's request for
an oral hearing has been made after the examiner's
answer. Also, the examiner should make a notation
"Examiner will attend (but not participate in) hearing"
on the face of the file wrapper below the box for the
. examiner's name.
1208.01 Prohibition Against Entry of
New Ground of Rejection in
Examiner'sAnswer
37 CFR 1.193(a)(2) prohibits the entry of a new
ground of rejection in an examiner's answer. At the
time of preparing the answer to an appeal brief, however,
the examiner may decide that he or she should
apply a new ground of rejection against some or all of
the appealed claims. In such an instance where a new
ground of rejection is necessary, the examiner should
reopen prosecution. The examiner must obtain supervisory
approval in order to reopen prosecution after
an appeal. See MPEP § 1002.02(d).
There is no new ground of rejection when the basic
thrust of the rejection remains the same such that an
appellant has been given a fair opportunity to react to
the rejection. See In re Kronig, 539 F.2d 1300, 1302­
03, 190 USPQ 425, 426-27 (CCPA 1976). Where the
statutory basis for the rejection remains the same, and
the evidence relied upon in support of the rejection
remains the same, a change in the discussion of, or
rationale in support of, the rejection does not necessarily
constitute a new ground of rejection. !d. at
1303, 190 USPQ at 427 (reliance upon fewer references
in affirming a rejection under 35 U.S.C. 103
does not constitute a new ground of rejection).
37 CFR 1.193(a)(2) also provides that if:
(A) an amendment under 37 CFR 1.116 proposes
to add or amend one or more claims;
(B) appellant was advised (through an advisory
action) that the amendment would be entered for purposes
of appeal; and
(C) the advisory action indicates which individual
rejection(s) set forth in the action from which appeal
August 2001
1200-24
has been taken would be used to reject the added or
amended claims, then
(I) the appeal brief must address the rejection(s)
of the added or amended claim(s) and
(2) the examiner's answer may include the
rejection(s) of the added or amended claims.
The filing of such an amendment represents appellant's
consent to proceed with the appeal process. For
example, when an amendment under 37 CFR 1.116
cancels a claim (the "canceled claim") and incorporates
its limitations into the claim upon which it
depends or rewrites the claim as a new independent
claim (the "appealed claim"), the appealed claim contains
the limitations of the canceled claim (i.e., the
only difference between the appealed claim and the
canceled claim is the claim number). In such situations,
the appellant has been given a fair opportunity
to react to the ground of rejection (albeit to a claim
having a different claim number). Thus, such a rejection
does not constitute a "new ground of rejection"
within the meaning of 37CFR 1.193(a)(2).
The phrase "individual rejections" in 37 CFR
1.193(a)(2) addresses situations such as the following:
the action contains a rejection of claim I under
35 U.S.c. 102 on the basis of Reference A, a rejection
of claim 2 (which depends upon claim I) under
35 U.S.C. 103 on the basis of Reference A in view of
Reference B and a rejection of claim 3 (which
depends upon claim I) under 35U.S.C. 103 on the
basis of Reference A in view of Reference C. In this
situation, the action contains the following "individual
rejections": (I) 35 U.S.C. 102 on the basis of Reference
A; (2) 35 U.S.C. 103 on the basis of Reference
A in view of Reference B; and (3) 35 U.S.C. 103 on
the basis of Reference A in view of Reference C. The
action, however, does not contain any rejection on the
basis of A in view of B and C. If an amendment under
37 CFR 1.116 proposes to combine the limitations of
claims I and 2 together into new claim 4 (or add the
limitations of claim 2 to claim I), 37 CFR 1.193(a)(2)
would authorize a rejection of claim 4 (or amended
claim I) under 35 U.S.C. 103 on the basis of Reference
A in view of Reference B, provided the applicant
was advised that this rejection would be applied to
claim 4 (or amended claim I). Likewise, if an amendment
under 37 CFR 1.116 proposes to combine the
limitations of claims I and 3 together into new claim
4 (or add the limitations of claim 3 to claim I),

37 CFR 1.193(a)(2) would authorize a rejection of
claimd (or amended claim 1) under 35 U.S.C. 103 on
the basis of Reference A in view of Reference C, provided
the applicant was advised that this rejection
would be applied to claim 4 (or amended claim 1). If,
however, an amendment under 37 CFR 1.116 proposes
to combine the limitations of claims 1, 2, and 3
together into new claim 4 (or add the limitations of
claims 2 and 3 to claim 1),37 CFR 1.193(a)(2) would
not authorize a rejection of claim 4 (or amended
claim I) under 35 U.S.C. 103 on the basis of Reference
A in view of Reference B and Reference C, even
if the applicant is advised that tltis rejection would be
applied to claim 4 (or amended claim I). Of course, as
a claim including the limitations of both claim 2 and
claim 3 is a newly proposed claim in the application
raising a new issue (i.e., a new ground of rejection),
such an amendment under 37 CFR 1.116 may properly
be refused entry as raising new issues.
It must be emphasized that. amended 37 CFR
1.193(a)(2) does not change the existing practice with
respect to amendment after final rejection practice
(37 CFR 1.116). The fact that 37 CFR 1.193(a)(2)
would authorize the rejection in an examiner's answer
of a claim sought to be added or amended in an
amendment under 37 CFR 1.116 has no effect on
whether the amendment under 37 CFR 1.116 is entitled
to entry. The provisions of 37 CFR 1.116 control
whether an amendment under 37 CFR 1.116 is entitled
to entry; the provisions of 37 CFR 1.193(a)(2)
control the rejections to which a claim added or
amended in an amendment under 37 CFR 1.116 may
be subject in an examiner's answer.
A new prior art reference cited for the first time in
an examiner's answer generally will constitute a new
ground of rejection. If the citation of a new prior art
reference is necessary to support a rejection, it must
be included in the statement of rejection, which would
be considered to introduce a new ground of rejection.
Even if the prior art reference is cited to support the
rejection in a minor capacity, it should be positively
included in the statement of rejection. In re Hoch, 428
F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n. 3 (CCPA
1970). However, where a newly cited reference is
added merely as evidence of the prior well known
statement made by the examiner, the citation of the
reference.in the examiner's answer would not consti-
APPEAL 1208.02
tute a new ground of rejection within the meaning of
37 CFR 1.192(a)(2). See also MPEP §2144.03.
Any allegation that an examiner's answer contains
an impermissible new ground of rejection is waived if
not timely (37 CFR 1.181(f) raised by way of a petition
under 37 CFR 1.181(a).
1208.02 Reopening of Prosecution
After Appeal
The examiner may, with approval from the supervisory
patent examiner, reopen prosecution to enter a
new ground of rejection after appellant's brief orreply
brief has been filed. The Office action containing a
new ground of rejection may be made final if the new
ground of rejection was (A) necessitated by amendment,
or (B) based on information presented in an
information disclosure statement nnder 37 CPR
1.97(c) where no statement under 37 CFR 1.97(e) was
filed. See. MPEP § 706.07(a).
Form paragraph 12.81 may be used when reopen'
ing prosecution:
'/l 12.81 Reopening of Prosecution - New Ground of
Rejection After Appeal or Examiner's Rebuttal of Reply
Brief
In view of the [1] filed on [2], PROSECUTION IS HEREBY
REOPENED. [31set forth below.
To avoid abandonment of the application, appellant mustexercise
one of the following twooptions:
(1) file a reply under 37 CPR 1.111 (if this Office action
is non-final) or a reply under 37 CPR 1.113 (if this Office
action Isflnal); or,
(2) request reinstatement of the appeal.
If reinstatement of-the appeal is requested, such request must
be accompanied by a supplemental appeal- brief, but no new
amendments, affidavits (37 CPR 1.130, 1.131 or 1.132) or other
evidence are permitted. See 37 CPR 1.193(b)(2).
Examiner Note:
1. Use -this form paragraph to reopen prosecution in order to
make a new ground of rejection ofclaims or to enter a rebuttal to
the reply brief. The finality or non-finality of an Office action following
a reopening ofprosecution depends on whether the action
could have been properly made final had it been entered prior to
the appeal.
2. In bracket 1, insert --appeal brief--, -vsupplemental appeal
brief--, Lrepl y brief-- or --supplemental reply brief-r-,
3. In bracket 2, insert the-date on which the brief was filed.
4. In bracket 3; insert --A new ground of rejection is->, -Hew
grounds ofrejection are-. or c-A rebuttal to the Reply Brief is--:-.
1200-25 August 2001

1208.03 MANUAL OF PATENT EXAMINiNG PROCEDURE
After reopening of prosecution, appellant must
exercise one of the following options to avoid abandonment
of the application:
(A) file a reply under 37 CPR 1.111, if the Office
action is non-final;
(B) file a reply under 37 CPR 1.113, if the Office
action is final; or
(C) request reinstatement of the appeal.
See 37 CPR 1.193(b)(2). Whether appellant elects to
continue prosecution or to request reinstatement of
the appeal, if prosecution was reopened prior toa
decision on the merits by the Board of Patent Appeals
and Interferences, the fee paid for the notice of
appeal, appeal brief, and request for oral hearing (if
applicable) will be applied to a later appeal on the
same application.
If reinstatement of the appeal is requested,· the
request must be accompanied by a supplemental
appeal brief; however, no new amendments, affidavits
(37 CPR 1.130, 1.131, or 1.132), or other evidence is
permitted. The supplemental appeal brief must comply
with the requirements of 37 CPR 1.192(c), but in
doing so may incorporate by reference such parts of
the previously-filed brief as may still be applicable.
The arguments presented in the supplemental appeal
brief need only be those relevant to the new ground(s)
of rejection raised in the Office action that reopened
prosecution, but the appellant should also identify all
previously-raised. issues andlor arguments ",hich are
still considered to be relevant If the examiner does
not consider that the supplemental appeal brief complies
with the foregoing requirements, appellant
should be. given a l-month time period within which
to file an amended supplemental brief under 37 CPR
1.192(d).See MPEP § 1206.
After the supplemental appeal brief is filed, the
examiner may issue an answer thereto, and appellant
may file a reply brief. It is also possible that, after
reading the brief, the examiner may be convinced that
some or all of the finally rejected claims are allowable.
Where the examiner is of the opinion that some
of the claims are allowable, he or she should so specify
in the examiner's answer and confinethe arguments
to· the remaining rejected claims. If the
examiner finds, upon reconsideration, that all the
rejected claims are allowable, or where the appellant
in the brief withdraws the appeal as to some of the
August2001 1200-26
rejected claims by submitting an appropriate amendment
and the examiner finds the remaining claims to
be allowable, the examiner should allow the application.
In applications where an interference has resulted
from the applicant provoking an interference with the
patent which provided the basis for final rejection, the
rejection based on that parent should be withdrawn
and the appeal dismissed as to the involved claims.
1208.03 Reply Brief
37 CFR 1.193. Examiner's answer and reply brief
*****
(b)(l)Appellant may file a reply brief to an examiner's
answer or a supplemental examiner's answer within two.months
from the date of such examiner's answer or supplemental exam":
mer's answer. See §L136(b) for extensions of time for filing a
reply brief in apatent applicationand § 1.550(c) for extensions of
time for filing a reply brief in a reexamination proceeding. The
primary examiner must either acknowledge receipt and entry of
thereplybrieforwithdraw the finalrejection andreopen prosecution
to respond to the reply.brief. A supplemental examiner's
answeris not permitted, unless the application hasbeen remanded
by the Board of Patent Appeals and Interferences for such.purpose.
(2) Where prosecutionis reopenedby the primary examiner
after an appeal or reply brief has been filed, appellant must
exercise one of the following two options' to avoid abandonment
of the application:
(i) File a replyunder§ 1.111, if the Office action is
not final, or a reply under§ 1.113,ifthe Office action is final; or
(ii) Request reinstatement of theappeal-, If reinstatement
of the appeal is requested, such request must be accompanied
by a supplemental appeal brief, but no new amendments,
affidavits (§§ 1.130, U31 or U32) or atber evidence are permitted.
Under37CFR 1.193(b)(1), appellant may file a
reply brief as a matter of right within 2 months from
the mailing date of the examiner's answer or supplemental
examiner's answer. Extensions of time to file
the reply brief may be granted pursuant to 37 CPR
1.136(b) or 1.550(c). The primary examiner must then
either: (A) acknowledge receipt and entry of the reply
brief by using form paragraph 12.47 on form PTOL­
90; or (B) reopen prosecution to respond to the reply
brief. See MPEP§ 1208.02. A supplemental examiner's
answer is not permitted unless the application
has been remanded by the Board for such purpose.

Amendments, affidavits, andlor other evidence
must be submitted in papers separate from the reply
brief, and the entry of such papers is subject to the
provisions of 37 CPR 1.116 and 37 CFR 1.195. A
paper that contains an amendment (or evidence) is not
a reply brief within the meaning of 37 CFR 1.193(b).
Snch a paper will not be entitled to entry simply
because it is characterized as a reply brief.
While 37 CFR 1.193(b)(1) prohibits a supplemental
examiner's answer (in the absence of a remand from
the Board of Patent Appeals and Interference for such
purpose), an examiner may (with supervisory patent
examiner approval) respond to a reply brief by
reopening prosecution. The acknowledgment of
receipt and entry of a reply brief under 37 CFR
1.193(b)(1) is an indication by the examiner that no
further response by the examiner is deemed necessary.
Thus, a remand by the Board of Patent Appeals and
Interference under 37 CFR 1.193(b)(1) in an application
containing an acknowledgment of receipt and
entry of a reply brief under 37 CFR 1.193(b)(1) for
the express purpose of a response by the examiner to
the reply brief (a supplemental examiner's answer)
should rarely, if ever, be necessary.
It should also be noted that an indication of a
change in status of claims (e.g., that certain rejections
have been withdrawn as a result of the reply brief) is
not a supplemental examiner's answer and is of
course permitted. Such an indication of a change in
status of claims may be made on form PTOL-90.
For procedure where prosecution is reopened after
a reply brief has been filed, see MPEP § 1208.02.
Form paragraph 12.47 may be used to acknowledge
receipt and entry of a reply brief.
'If 12.47Acknowledgment ofReply Brief
Application No. [11
Art Unit[21
Thereplybrieffiled [3] hasbeenentered andconsidered. The
application has been forwarded to the Board of Patent Appeals
andInterferences fordecisionon the appeal.
Examiner Note:
1. This form paragraph is to be printed on a blank page for
attachment to a PfOL-90 or PfO-90C.
2. If an amendment, an affidavit and/or a declaration has/have
been filed withthe reply brief, the examinermust notify the appellant
in writing whether it has been entered. Unless' the amendment,
affidavit, and/or declaration place(s) the application in
condition for allowance, entry should not be permitted. See 37
CPR 1.116 and 37 CPR 1.195. This is particularly important
since a supplemental examiner's answer is D.Q! permitted, unless
APPEAL 1209
the applicationhas been remanded by the Boardof PatentAppeals
and Interferences for such purpose. See 37 CPR 1.193(b)(I).
1209 Oral Hearing
37 CFR 1.194. Oral hearing.
(a) An oral hearing should be requested only in those circumstancesin
which appellant considers such a hearingnecessary
or desirable for a proper presentation of theappeaI. An appeal
decided without an oral hearing will receive the same consideration
by theBoard of PatentAppeals and Interferences as appeals
decided after oralhearing.
(b) If appellant desires an oral hearing, appellant must file,
in a separate paper, a written request for such hearing accompanied
by the fee set forth in § 1.17(d) within two months from the
date of the examiner's answer. If appellantrequests an oral hearing
and submits therewith the fee set forthin '§ 1.17(d), an oral
argument may be presentedby, or on behalf of, the primary examiner
ifconsidered desirableby either the primary examiner or the
Board.See § 1.136(b) for extensions of time for requestingan oral
hearing in,a patent application and § 1.550(c)for extensions of
time for requestingan oralhearingin a reexamination proceeding.
(c) If no request and fee for oral hearing have,been timely
filed by appellant, the appeal- will be assigned for consideration
and decision. If appellant has requested an: oral hearing and has
submitted the fee set forth in § 1.17(d), a day of heariug will be
set, ,and due notice thereof given to appellant 'and to the primary
examiner. A hearing will be heldas stated in the notice, and oral
argument will be limitedto twenty minutes for appellant and fifteen
minutes for the primary examiner unless otherwise ordered
before the hearing begins. If the Board decides that a hearingis
not necessary,the Boardwill so notify appellant
37 CPR 1.194(b) provides that an appellant who
desires an oral hearing before the Board must request
the hearing by filing, in a separate paper, a written
request therefor, accompanied by the appropriate fee
set forth in 37CFR 1.l7(d), within 2 months after the
date of the examiner's answer.This time period may
only be extended by filing a request under either
37 CFR 1.l36(b) or, if the appeal involves an ex parte
reexamination proceeding, under 37 CFR 1.550(c),
A notice of hearing, stating the date, the time, and
the docket, is forwarded to the appellant in due
course. If appellant fails to confirm within the time
required in the notice of hearing, the appeal will be
removed from the hearing docket and assigned on
brief in due course. No refund of the fee for .requesting
an oral hearing will be made. Similarly, after confirmation,
if no appearance is made at the scheduled
hearing, the appeal willbe decided on brief. Since
failure to notify the Board of waiver of hearing in
advance of the assigned date results in a waste of the
Board's resources, appellant should inform the Board
1200 c27 August 2001

1210 MANUAL OFPATENT EXAMllITNG PROCEDURE
of a change in plans at the earliest possible opportnnity.
If the Board determines that a hearing is not necessary
(e.g., a remand to the examiner is necessary or
it is clear that the rejection(s) cannot be sustained),
appellant will be notified.
If appellant has any special request, such as for a
particular date or day of the week, this will be taken
into consideration in setting the hearing, if made
known to the Board in advance, as long as such
request does not unduly delay a decision in the case
and does not place an undue administrative burden on
the Board.
The appellant mayalso file a request, in a paper
addressed to the Chief Clerk of the Board, to present
hisfher arguments via telephone. The appellant making
the request will be required to bear the cost of the
telephone call.
If the titne set in the notice ofhearing conflicts with
prior commitments Or if subsequent events make
appearance impossible, the hearing may be rescheduled
on written request. However, in view of the
administrative burden involved in rescheduling hearingsand
the potential delay which may result in the
issuance of any patent based on the applicatioll on
appeal, postponements are discouraged and will not
be granted in the absence of convincing reasons in
support of the requested change.
Normally, 20 minutes are allowed for appellant to
explain his or her position. If appellant believes that
additional time will be necessary, a request for such
time should be made well in advance and will be
taken into consideration in assigning the,hearing date.
The final decision on whether additional time is to be
granted rests within thediscretion of the senior member
of the panel hearing the case.
PARTICIPATION BY EXAMINER
If the appellant has requested an oral hearing and
the primary examiner wishes to appear and present an
oral argument before the Board, a request to present
oral argument must be included as the last paragraph
of the examiner's answer, using form paragraph
12;63. See MPEP § 1208. If the appellant's request
for a hearing is filed after the examiner's answer, then
the examiner's request must be in an acknowledgement
of reply brief, if applicable, or in a separate letteron
form PTOL-90. In either case, the examiner
should also make a notation "Examiner Requests an
August2001
1200-28
Oral Hearing" on the face of the file wrapper below
the box for the examiner's name.
In those appeals in which an oral hearing has been
confirmed and either the primary examiner or the
Board has indicated a desire for the examiner to participate
in the oral argument, oral argument may be
presented by the examiner whether or not appellant
appears.
After the oral hearing has been confirmed and the
date set as provided in 37 CPR 1.l94(c), the application
file will be delivered to the examiner via the
appropriate Technology Center Director at least
2 weeks prior to the date of the hearing and the examiner
will be notified of the date of the hearing. In those
cases where the Board requests the presentation of an
oral argument by or on behalf 'of the primary examiner,
the Board's request may, where appropriate, indicate
specific points or questions to which the
argument Should be particularly directed. The application
file must be returned to the Board at least 2 working
days before the hearing.
In any appeal where oral argument is tobe pre,
sented by, or on behalf of, the primary examiner, the
appellant will be given due notice of that fact.
At the hearing, after the appellant has made his or
her presentation, the examiner will be allowed 15
minutes to reply as well as to present a statement
which clearly sets forth his or her position with
respect to the issues and rejections of record. Appellant
may utilize any allotted time not used in the initial
presentation for rebuttal.
If the examiner wishes, toattend the oral hearing as
an observer but not to present oral argument, see
MPEP § 1208.
1210 Actions Subsequent to Examiner's
.Answer but Before Board's
Decision
JURISDICTION OF BOARD
The application file and jurisdiction of the application
are normally transferred from the Technology
Centers to the Board at one of the following times:
(A) After 2 months from the examiner's answer,
plus mail room time, if no reply brief has been timely
filed.

(B) After a supplemental examiner's answer, pursuant
to a remand from the Board, has been mailed.
(C) After the examiner has notified the appellant
by written communication that the reply brief has
been entered and considered and that the application
will be forwarded to the Board (for example, by mailing
a PrOL-90 with form paragraph 12.47, as
described in MPEP § 1208.03).
Any amendment, affidavit, or. other paper relating
to the appeal, filed thereafter but prior to the decision
of the Board, may be considered by the examiner only
in the event thecase is remanded by the.Board for that
purpose.
DIVIDED JURISDICTION
Where appeal is taken from the second or final
rejection only of one or more claims presented for the
purpose of provoking an interference, jurisdiction of
the rest of the case remains with the examiner, and
prosecution of the remaining claims may proceed as
though the entire case was under his orherjurisdiction.
Also, where the examiner certifies in writing that
there is no conflict of subject matter and the administrative
patent judge in charge of the interference
approves, an appeal to the Board may proceed concurrently
with an interference. See MPEP § 2315.
ABANDONMENT OF APPEAL: APPLICATION
REFILED OR ABANDONED
To avoid the rendering of decisions by the Board in
applications which have already been refiled as continuations,
appellants should promptly inform the
clerk of the Board in writing as soon as they have positively
decided to refile or to abandon an application
containing an appeal awaiting a decision.. Failure to
exercise appropriate diligence in this matter may
result in the Board's refusing an otherwise proper
request to Vacateits decision.
See MPEP § 1215.01 - § 1215.03 concerning the
withdrawal of appeals.
1210.01 Order for Compliance
While the examiner will assume that the real party
in iriterest is the individual or individuals identified in
the caption when the real party in interest is riot
explicitly set out in the brief, the Board may require
APPEAL 1211
the appellantto explicitly name the real partyin interest.
Likewise, while the examiner will assume that
there are no related cases when no related case is
explicitly set out in the brief, the Board may require
the appellant to explicitly identify any related case.
When the Board elects to require an explicit state,
ment, an order for compliance with the rule will be
entered setting ale month period for reply to the
Board's requirement (37 CFR 1.192(d)). Extensions
of time are only available under 37 CFR 1.136(b). An
entire new brief need not, and should not, be filed.
Rather, a simple paper identifying the real party in
interest or explicitly stating that the appellant is the
real party in interest will suffice. Failure to timely
respond to the Board's requirement may result in dismissal
ofthe appeal. See MPEP § 1215.04 and MPEP
§ 711.02(b).
1211 Remand by Board
The Board has authority to remand a case to the
examiner when it deems it necessary. For example,
the Board may remand for a fuller description of the
claimed invention and, in the case of a machine, a
statement of its mode of operation.' In certain cases
where the pertinence of the references is not clear, the
Board may call upon the examiner for a further explanation.
In the case of multiple rejections of a cumulative
nature, the Board may also remand for selection
of the preferredor best ground. The Boardmay also
remand a case to the examiner for further search
where it feels that the most pertinent art has not been
cited, or to consider an amendment, affidavit, or declaration.
See MPEP§ 1211.01, § 1211.02, and
§ 1211.03. Furthermore, the Board may remand an
application to the examiner to prepare a supplemental
examiner's· answer in response to a reply brief. The
following form paragraph may be used in preparing
the supplemental examiner's answer after a remand
from the Board:
'J{ 12.80 Supplemental Examiner's Answer - On Remand
Pursuant to the Remand under 37 CFR 1.193(b)(1)by the
Board of PatentAppeals.and Interferences on j l], .a supplemental
Examiner's Answeris set forth below:[2].
Examiner Note:
1. Insert thedateof the Remand,
2. 'Provide'rdasonssupporting the rejections set forth in thesupplementalExaminer'sAnswer.
1200-29 August 2001

37 CFR 1.196(d) authorizes the Board to require au
appellaut to clarify the record by addressing any matter
deemed appropriate for a reasoned decision on the
appeal. This may include, for example: (A) the applicability
of particular case law that has not been previously
identified as relevaut to an issue in the appeal;
or (B) the applicability of prior art that has not been
made of record.
The rule further provides that the appellant will be
given a non-extendable time period within which to
respond to the requirement. Failure to respond within
the time period set by the Board will result in dismissal
of the appeal.
The making of a requirement under 37 CFR
1.196(d) is discretionary with the Board. The authority
granted in 37 CFR 1.196(d) does not affect. the
Board's anthority to remaud a case to the examiner in
a situation where the Board considers action by the
examiner in the first instance to be necessary ordesirable.
See MPEP § l2l!. Also, after au appellant has
replied to a requirement under 37 CFR 1.196(d), a
remand to the examiner may be deemed to be appropriate.
1213 Decision by Board
37 CFR 1.196. Decision bythe Board of Patent Appeals
and Interferences.
(a) The Board of Patent Appeals and Interferences, in its
decision" may affirm or reverse the decision of the examiner in
whole or in parton the grounds .and on theclaims specified by the
examiner or remand the application.to the examiner for,further
consideration. The affirmance of therejection of a claim on any of
the grounds specified constitutes a general affmnance of the decision
of the examiner on that claim, except as to any ground specifically
reversed.
*****
(e) Whenevera decision of the Boardof PatentAppeals and
Interferences includes'or allows' a remand, that decisionshallnot
be considered a final decision. When appropriate, upon conclusion
of proceedings on remand before the examiner, the Boardof
Patent Appeals and Interferences may. enter an order. otherwise
makingits decision final.
*****
After consideration of the record including appellant's
brief and the examiner's auswer, the Board
APPEAL 1213
writes its decision, affirming the examiner in whole or
in part, or reversing the examiner's decision, sometimes
also setting forth a new ground of rejection.
37 CFR 1.196(e) provides that a decision of the
Board which includes a remaud will not be considered
as a final decision in the case. The Board, following
conclusion of the proceedings before the examiner,
will either adopt its earlier decision as final or will
render a new decision based on all appealed claims, as
it considers appropriate. Ineither case, final action by
the Board will give rise to the alternatives available to
an appellant following a decision by the Board.
On occasion, the Board has refused to consider au
appeal nntil after the conclusion of a pending civil
action or appeal to the Court of Appeals for the Federal
Circuit involving issues identical with aud/or
similar tothose presented in the later appeal. Such
suspension of action, postponing consideration of the
appeal until the Board has the benefit of a court decision
which may be determinative of the issues
involved, has been recognized as sound practice. An
appellaut is not entitled, after obtaining a finaldecision
by the U.S. Patent aud Trademark Office on au
issue in a case, to utilize the prolonged pendency of a
court proceeding as a meaus for avoiding res judicata
while relitigating the same or substantially the same
issue in another application.
An applicant may request that the decision be withheld
to permit the refiling of the application at auy
time prior to the mailing of the decision. Up to 30
days may be granted, although the time is usually limited
as much as possible. The Board will be more
prone to entertain the applicaut's request where the
request is filed early, obviating the necessity for au
oral hearing or even for the setting of the oral hearing
date. If the case has already been set for oral hearing,
the petition should include a request to vacate the
hearing date, not to postpone it.
In a situation where a withdrawal of the appeal is
filed on the same day that the decision is mailed, a
petition to vacatethe decision will be denied.
See MPEP § 1214.01 concerning the procedure following
a new ground of rejection by the Board uuder
37CFR1.l96(1:».
1200-31 August2001

1213.03 Publication ofBoard Decision
Decisions of the Board may be published at the
discretion of the Commissioner. Requests by members
of the public or applicants to publish a decision
of the Board should be referred to the Office of the
Solicitor. A decision in a pending or abandoned application
will be published in accordance with 37 CFR
1.l4(g).
Decisions of the Board which are open to the public
are available in electronic form on the USPTO website
(http://www.uspto.gov).
1214 Procedure Following Decision
by Board
37 CFR 1.197. Actionfollowing decision.
(a) After decision by the Board of Patent Appeals and Interferences,
the application will be returned to the examiner, subject
to appellant's right of appeal or other review, for such further
action by appellant .or by the examiner, as the condition of the
application may require, to carry into effect the decision.
*****
After an appeal to the Board has been decided, a
copy of the decision is mailed to the appellant and the
original placed in the file. The clerk of the Board
notes the decision on the file wrapper and in the
record of appeals, and then forwards the file to the
examiuer through the office of the Technology Center
Director immediately if all rejections are reversed,
and after about 10 weeks if any rejection is affirmed
or after a decision on a request for rehearing is rendered.
1214.01 Procedure Following New
Ground of Rejection by Board
When the Board makes a new rejection under
37 CFR 1.l96(b), the appellant, as to each claim so
rejected, has the option of:
(A) submitting au appropriate amendment and/or
a showing of facts (37 CFR 1.l96(b)(l)); or
(B) requesting rehearing (37 CFR 1.l96(b)(2».
The amendment and/or showing of facts under
37 CPR 1.l96(b)(1), or the request for rehearing
under 37 CPR 1.196(b)(2), must be filed within 2
months from the date of the Board's decision. Iu
APPEAL 1214.01
accordance with 37 CFR 1.196(1), this 2-month time
period may not be extended by the filing of a petition
and fee under 37 CFR 1.136(a), but only under the
provisions of 37 CPR 1.136(b), or under 37 CFR
1.550(c) if the appeal involves an ex parte reexamination
proceeding.
If an appellant files an appropriate amendment or
showing of facts (see paragraph I below) as to less
than all of the claims rejected by the Board under
37 CFR, 1.196(b), and a request for rehearing (see
paragraph II below) as to the remainder of the claims
so rejected, the examinerwill not consider the claims
for which rehearing was requested. The request for
rehearing will be considered by the Board after prosecution
before the examiner with respect to the first
group of claims is terminated. Argument as to any of
the claims rejected by the Board which is not accompanied
by an appropriate amendment or showing of
facts as to those claims will be treated as a request for
rehearing as to those claims.
I. SUBMISSION OF AMENDMENT OR
SHOWING OF FACTS
37 CFR 1.196(b)(I) provides that the application
will be remanded to the examiner for reconsideration
if the appellant submits "an appropriate amendment"
of the claims rejected by the Board, "or a showing of
facts relating to the claims so rejected, or both." An
amendment is "appropriate" under the rule if it
amends one or more of the claims rejected, or substitutes
new claims to avoid the art or reasons adduced
by the Board. Ex parte Burrowes, 110 O.G. 599, 1904
C.D. 155 (Comm'r Pat. 1904). Such amended or new
claims must be directed to thesame subject matter as
the appealed claims. Ex parte Comstock, 317 O.G.
4,1923 C.D. 82 (Comm'r Pat. 1923). An amendment
which adds new claims without either amending the
rejected claims, or substituting new claims for the
rejected claims, is not appropriate. The new claims
will not be entered, and the examiner should return
the application file to the Board for consideration of
the amendment as a request for rehearing under
37 CFR 1.196(b)(2), if it contains any argument concerning
the Board's rejection. The "showing of facts"
under the rule may be a showing under 37 CFR 1.130,
1.131 or 1.132, as may be appropriate.
1200-33 August 2001

§ 1.136(b) for extensions of time for seeking rehearingin a patent
application and§ 1.550(c) for extensions of time for seeking
rehearingin a reexaminationproceeding.
*****
The term "rehearing" is nsed in 37 CFR 1.197(b)
for consistency with the language of35 U.S.C. 6(b).It
should not be interpreted as meaning that an appellant
is entitled to an oral hearing on the request for rehearing,
but only to a rehearing on the written record. It is
not the normal practice of the Board to grant rehearings
in the sense of another oral hearing. Ex parte
Argoudelis, 157 USPQ 437, 441 (Bd. App, 1967),
rev'd. on other grounds, 434 F.2d 1390, 168 USPQ 99
(CCPA 1970).
37 CFR 1.197(b) provides that any request for
rehearing must specifically state the points believed to
have been misapprehended or overlooked in the
Board's decision. Experience has shown that many
requests for rehearing are nothing more than reargument
of appellant's position on appeal. In response,
the rule was revised to limit requests to the points of
law or fact which appellant feels were overlooked or
misapprehended by the Board.
The 2-month period provided by 37 CPR 1.197(b)
for filing a request for rehearing can only be extended
under the provisions of 37 CPR 1.136(b) or under
37 CPR 1.550(c) if the appeal involves an ex parte
reexamination proceeding.
All copies of referencesin the file wrapper should
be retained therein.
For extension of time to appeal to the Court of
Appeals for the Federal Circuit or commence a civil
action under 37 CFR l.304(a), see MPEP § 1216 and
§ 1002.02(0). .
For requests for reconsideration by the examiner,
see MPEP § 1214.04.
1214.04 Examiner Reversed
A complete reversal of the examiner's rejection
brings the case up for immediate action by the examiner.
If the reversal does not place an application in
condition for immediate allowance (e.g., the Board
has entered a new ground of rejection under 37 CPR
1.196(b», the examiner should refer to the situations
outlined in MPEP § 1214.06 for appropriate guidance.
APPEAL 1214.05
The examiner should never regard such a reversal
as a challenge to make a new searchto uncover other
and better references. This is particularly so where the
application or exparte reexamination proceeding has
meanwhile been transferred or assigned to an examiner
other than the one who rejected the claims leading
to the appeal. The second examiner should give
full faith and.credit to the prior examiner's search.
Ifthe examiner has specific knowledge of the existence
of a particular reference or references which
indicate. nonpatentability of any of the appealed
claims as to which the examiner was reversed, he or
she should submit the matter to the Technology Center
(TC) Director for authorization to reopen prosecution
under 37 CFR 1.198 for the purpose of entering
the new rejection. See MPEP § 1002.02(c) and MPEP
§ 1214.07..The TC Director's approval is placed on
the action reopening prosecution.
The examiner may request rehearing of the Board
decision, Such a request should normally be made
within 2 months of the receipt of the Board decision
in the TC. The TC Director's secretary should therefore
date stamp all Board decisiollsupon receipt in the
TC.
All requests by the examiner to the Board for
rehearing of a decision must be approved by the TC
Director and must also be forwarded to the Office of
the Deputy Commissioner for Patent Examination
Policy for approval before mailing.
The request should set a period of 1 month for the
appellant to file a reply.
If approved, the Office of the Deputy Commissioner
for Patent Examination Policy will mail a copy
of the request for rehearing to the appellant. After the
period set for appellant to file a reply (plus mailing
time) has expired, the application file will be forwarded
to the Board.
1214.05 Cancellation of Withdrawn
Claims
Where an appellant withdraws some of the
appealed claims, and the Board reverses the examiner
on the remaining appealed claims, the withdrawal is
treated as an authorization to cancel the withdrawn
claims. It is not necessary to notify the appellant of
the cancellation of the withdrawn claims.
1200-35 August2001

1214.06 MANUAL OF PATENT EXAMINING PROCEDURE
1214.06 Examiner Sustained in Whole
or in Part
37 CFR 1.197. Actionfollowing decision.
*****
(c) Terminati()D ofproceedings. Proceedings are considered
tenninatedby the dismissal of an appeal or the failure to timely
file lU1 appeal to the court or a civil action (§ 1.304) except: (I)
Where-,claif!ls stand allowed in an, application or (2) Where the
nature ofthe decision requires furtheraction by the ,examiner. The
date of termination of proceedings is the date on which the appeal
is 'dismissed'oIiliedateon which the time forappealtothe court
or review by civil action (§ 1.304) expires. If an appeal to the
court or a civil action.has been filed, proceedings are consideredterminated
when the. appeal or civil. action: is terminated." An
appeal to the U.S. Court of Appeals for the Federal Circuit is terminated
when the mandate is received by the Office. A civil
action is terminated when the time to appeal the judgment expires.
The time for seeking review of a decision ofthe
Board by the Court of Appeals for the Federal.Circuit
or the U.S. District Court for theDistrict ofColumbia
is the same for both tribunals, that is, 2 months, or 2
months with the.extension provided by 37 CFR 1.304
in the event a request for rehearing is timely filed
before the Board, or as extended by the Commissioner.
See MPEP.§ 1216. When .the time for seeking
courtreview (plus 2weeks to allow for informationas
to the filing of. an appeal or civil action, if any, to
reach the examiner) has passed without such review
being sought, the examiner must take up the application
for consideration. The situations which.can arise
will involve one or more of the following' circumstances:
I. NO CLAIMS STAND ALLOWED
The proceedings in an application or ex parte reexamination
proceeding are terminated as ofthe date of
the expiration of the time for filing court action. The
application is no longer considered as pending, Itis to
be stamped abandoned and sent to abandoned files. In
an ex parte reexamination proceeding, a reexamination
certificate should be issued under 37 CFR 1.570.
Claims indicated as allowable. prior to appeal
exceptfor their dependency from rejected claims will
be treated as if. they were rejected. The following
examples illustrate the appropriate approach to. be
taken by the examiner in various situations:
August 2001
1200-36
(A)lf claims 1-2 are pending, and the Board
affirms a rejection of claim 1 and claim 2 was
objected to prior to appeal as being allowable except
for its dependency from claim 1, the examiner should
hold the application abandoned.
(B) If the. Board or court affirms a rejection
against an independent claim and reverses all rejections
against a claim dependent thereon, the examiner,
after expiration of . the period for further appeal,
should proceed in one of two ways:
(1) Convert the dependent claim into independent
form by. examiner's amendment, cancel all
claims in which the rejection was affirmed, and issue
the application; or
(2) Set a I-month time limit in which appellant
may rewrite the dependent claim(s) in independent
form. Extensions of time under 37 CFR 1.136(a) will
not be permitted. If no timely reply is received, the
examiner will cancel. all. rejected and objected to
claims and issue the. application' with the allowed
claims only.
The following language may be used where appro'
priate:
Claim(s) .___ is/are incomplete because the
c1aim(s) on which it/they depend(s) from haslhave been
cancelled by" the examiner Ineccordance with MPEP
§1214.06. Applicant is given a ONE MONTH TIME
LIMIT fromthe date of thisIetter.In whichtopresent
c1aim(s) in iudependent forrn NO EXTEN­
SIONS OF TIME UNDER 37 CFR 1.136(.) WILL BE
GRANTED. Failure to comply with this deadline will
result in cancellation of claim(s) and this-application
will be:
i.allowed with claim(s) (if other claims are
allowedj.or
ii.abandoned (if there are no allowed claims).
II. CLAIMS STAND ALLOWED
The appellant is not required to file a reply. The
examiner issues the application or ex parte reexamination
certificate on the claims which stand allowed.
A red-ink line should be drawn through the refused
claims and the notion "Board Decision" written in the
margin in red ink.
If the Board affirms a rejection of claim 1, claim 2
was objected to prior to appeal as being
allowable except for its dependency from claim I and

independent claim 3 is allowed, the examiner should
cancel claims I and 2 and issue the application or ex
parte reexamination certificate with claim 3 only.
If uncorrected matters of form which cannot
be handled without written correspondence remain
in the application, the examiner should take appropriate
action but prosecution is otherwise closed. Note
paragraph I of this section for handling of claims
dependent on rejected claims. A letter such as that set
forth in form paragraph 12.20 is suggested:
'f{ 12.20 Period For Seeking Court Review Has Lapsed
The period for seeking court review of the decision by the
Board of Patent Appeals and Interferences rendered [1]. has
expired and no further action has been taken by appellant. The
proceedings as to the rejected claims are considered terminated;
see 37 CFR 1.197(c).
The application will be passed to issue on allowed clam, [21
provided the following formal matters are promptly corrected:
[3]. Prosecution is otherwise closed.
Applicant is required to make the necessary corrections
addressing the outstanding formal matters within a shortened statutory
period set to expire ONE MONTH or THIRTY DAYS,
whichever is longer, from the mailing date of.this letter. Extensions
of time may be granted under 37 CFR 1.136.
Examiner Note:
1. In bracket 1, enter the date of the decision.
2. In bracket 2, identify the allowed claims.
3. In bracket 3, identify the formal matters that need correction.
III. CLAIMS REQUIRE ACTION
If the decision of the Board is an affirmance in part
and includes a reversal of a rejection that brings certain
claims upfor action on the merits, such as a decision
reversing the rejection of generic claims in an
application or exparte reexamination proceeding containing
claims to nonelected species not previously
acted upon, the examiner will take up the application
or reexamination proceeding for appropriate action on
the matters thus brought up. However, the application
or reexamination proceeding is not considered open to
further prosecution except as to such matters.
IV. 37 CFR 1.196(b) REJECTION
Where the Board makes a new rejection under
37 CFR 1.I96(b) and no action is taken with reference
thereto by appellant within 2 months, the examiner
should proceed in the manner indicated in paragraphs
APPEAL
1214.06
I-III of this section as appropriate. See MPEP
§ 1214.01.
If the Board affirms the. examiner's rejection, but
also enters a new ground of rejection under 37 CFR
I.196(b), the subsequent procedure depends upon the
action. taken by the appellant with respect to the
37 CPR I.196(b) rejection.
(A) If the appellant elects to proceed before the
examiner with regard to the new rejection (see MPEP
§ 1214.01, paragraph I) the Board's affirmance will be
treated as nonfinal, and no request for rehearing of the
affirmance need be filed at that time. Prosecution
before the examiner ofthe 37 CFR I.196(b) rejection
can incidentally result in overcoming the affirmed
rejection even though the affirmed rejection is not
open to further prosecution. Therefore, it is possible
for the application to be allowed as a result of the limited
prosecution before the examiner of the 37 CPR
I.196(b) rejection. If an application becomes allowed,
it should not be returned to the Board. Likewise, ifan
application is abandoned for any reason, it should not
be returned to the Board. If the rejection under
37 CFR 1.196(b) is not overcome, the applicant (or
patent owner in an ex parte reexamination proceed,
ing) can file a second appeal (as discussed below).
Such appeal must be limited to the 37 CPR I.196(b)
rejection and may not include the affirmed rejection.
If an application does not become allowed or abandoned
as discussed above, once prosecution of the
claims which were rejected under 37 CFR 1.196(b) is
terminated before the examiner, the application file
must be returned to the Board so that a decision making
the original affirmance final can be entered. Similarly,
the file of any ex parte reexamination
proceeding including rejections affirmed by the Board
but made nonfinal for purposes of judicial review
must be returned to the Board so that the affirmance
can be made final by the Board. The time for filing a
request for rehearing on the affirmance or seeking
court review runs from the date of the decision by the
Board making the original affirmance final. See
MPEP § 1214.03 and § 1216.
(B) If the appellant elects to request rehearing of
the new rejection (see MPEP § 1214.01, paragraph
II), therequest for rehearing of the new rejection and
of the affirmance must be filed within 2 months from
the date of the Board's decision.
1200-37 August 2001

(B) When the decision of the Board asserts that
the rejection of the claims is proper because the
record does not include evidence of a specified character,
and is reasonably suggestive that if snch evidence
were presented, the appealed claims would be
allowable, and it is demonstrated that such evidence
presently exists and can be offered; or
(C) When the decision of the Board is based on a
practice, rule, law, or judicial precedent which, since
the Board's decision, has been rescinded, repealed, or
overruled.
Such petitions will not be ordinarily entertained
after the filing of the Commissioner's brief in cases in
which review has been sought under 35 U.S.C. 141,
or after trial in a 35 U.S.c. 145 case.
Inthe case of an appeal under 35 U.S.c. 141, if the
petition is granted, steps will be taken to request the
court to remand the case to the U. S. Patent and Trademark
Office. If so remanded, the proposed amendments,
evidence, and arguments will be entered of
record in the application file for consideration, and
further action will be taken by the Board in the first
instance or by the examiner as may be appropriate. In
the case of civil action under 35 U.S.C. 145, steps will
be taken for obtaining dismissal of the action without
prejudice to consideration of the proposals.
1215 Withdrawal or Dismissal of Appeal
1215.01 Withdrawal of Appeal
Except in those instances where a withdrawal of an
appeal would result in abandonment of an application,
an attorney not of record in an application or reexamination
proceeding may file a paper under 37 CFR
1.34(a) withdrawing an appeal. In instances where
no allowable claims appear in an application, the
withdrawal of an appeal is in fact an express abandonment
that does not comply with 37 CFR 1.138 except
where a continuing application is being filed on the
same date.
Where, after an appeal has been filed and before
decision by the Board, an applicant withdraws the
appeal after the period for reply to the final rejection
has expired, the application is to be considered abandoned
as of the date on which the appeal was withdrawn
unless there are allowed claims in the case.
Where a letter abandoning the application is filed in
accordance with 37 CFR 1.138,.the effective date of
APPEAL 1215.01
abandonment is the date of recognition of the letter by
an appropriate official of the Office or a different date,
if so specified in the letter itself. See MPEP § 711.01.
If a brief has been filed within the time permitted
by 37 CFR 1.192 (or any extension thereof) and an
answer mailed and appellant withdraws the appeal,
the application is returned to the examiner.
Prior to a decision by the Board, if an applicant
wishes to withdraw an application from appeal and to
reopen the prosecution of the application, applicant
can file a request for continued examination (RCE)
under 37 CFR 1.114, accompanied by a submission
(i.e., a reply responsive within the meaning of 37 CFR
Ul1 to the last outstanding Office action) and the
RCE fee set forth under 37 CFR 1.17(e). Note that the
RCE practice under 37 CFR 1.114 does not apply to
utility or plant patent applications filed before June 8,
1995, design applications, or reexamination proceedings.
See 37 CFR 1.114(d) and MPEP. § 706.07(h),
paragraph X, for more details. An appeal brief or
reply brief (or related papers) is nota submission
under 37 CFR 1.114, unless the transmittal letter of
the RCE contains a statement that incorporates by reference
the arguments in a previously filed appeal brief
or reply brief. See MPEP § 706.07(h), paragraph II.
The filing of an RCE will be treated as a withdrawal
of the appeal by the applicant, regardless of whether
the RCE includes the appropriate fee or a submission.
Therefore, when an RCE is filed without the appropriate
fee or a submission inan application that has no
allowed claims, the application will be considered
abandoned. To avoid abandonment, the RCE should
be filed in compliance with 37 CFR 1.114. See MPEP
§ 706.07(h), paragraphs I-II.
To avoid the rendering of decisions by the Board in
applications which have already been refiled as continuations,
applicants should promptly inform the
clerk of the Board in writing as soon as they have positively
decided to refile or to abandon an application
containing an appeal awaiting a decision. Applicants
also should advise the Board when an RCE is filed in
an application containing an appeal awaiting decision.
Failure to exercise appropriate diligence in this matter
may result in the Board refusing an otherwise proper
request to vacate its decision.
Applications having no allowed claims will be
abandoned. Claims which are allowable except for
their dependency from rejected claims will be treated
1200-39 August 2001

'.GHE:.f;?:""',\'--
alternatively, for a civil action against the Commissioner
in the United States Disttict Conrt for the District
of Columbia (35 U.S.C. 145). Former 35 U.S.C.
141 further provided that by filing an appeal to the
Court of Appeals for the Federal Circuit under
35 U.S.C. 141, a patent owner waived his her right to
proceed to file a civil action under 35 U.S.C. 145. See
37 CFR 1.303(a)-(b).
The amended versions of 35 U.S.C. 141 and 145
that went into effect on November 29, 1999 provide
that a patent owner may appeal only to the United
States Court of Appeals for the Federal Circuit.
Accordingly, a patent owner involved in the ex parte
reexamination of a patent that issued from an original
application filed in the United States on or .after
November 29, 1999 (or from an international application
designating the United States filed on or after
November 29, 1999) may seek judicial review only in
the United States Court of Appeals for the Federal
Circuit. See 37 CFR 1.303(d).
For judicial review of an inter partes reexamination
proceeding, see 35 U.S.c. 315. Because inter
partes reexamination procedures are found it) Chapter
31 (and not in Chapter 30) of Title 35 of the United
States Code, 35 U.S.C. 306 does not apply to an inter
partes reexamination proceeding.
JUDICIAL REVIEW OF INTERFERENCE
PROCEEDINGS
Any party to an interference who is dissatisfied
with a decision of the Board may seek judicial review
either by an appeal to the Federal Circuit (35 U.S.C.
141; 37 CFR 1.301) or, if no 35 U.S.c. 141 appeal is
pending or has been decided, by a civil action in an
appropriate district court (35 U.S.C. 146; 37 CFR
1.303(a». Furthermore, a 35 U.S.C. 141 appeal to the
Federal Circuit by a dissatisfied party in an interference
will be dismissed if any adverse party in the
interference, within 20 days after the appellant has
filed a notice of appeal according to 35 U.S.C. 142,
files notice with the Commissioner that such adverse
party elects to have all further proceedings conducted
in accordance with 35 U.S.c. 146. See 35 U.S.C.14I;
37 CFR 1.303(c). If, within 30 days after filing of
such notice of election by an adverse party, the appellant
does not file a civil action under 35 U.S.C. 146,
the decision appealed from shall govern the further
proceedings in the case. 35 lJ.S.C. 141. Copies of
APPEAL 1216
such notice of election, which must be served as pro"
vided in 37 CFR 1.646, will be transmitted by the
Solicitor to the Federal Circuit for such action as may
be necessary (37 CFR 1.303(c».
TIME FOR FILING NOTICE OF APPEAL OR
COMMENCING CIVIL ACTION
The time for filing a notice of a 35 U.S.c. 141
appeal to the Federal Circuit or for commencing a
civil action under 35 U.S.C. 145 or 146 is within
2 months of the Board's decision. 37 CFR 1.304(a).
However, ira request for rehearing or reconsideration
of the Board's decision is filed within the time provided
under 37 CFR 1.197(b) (ex parte appeals) or
37 CFR 1.658(b) (inter partes appeals), the time for
filing a notice of appeal to the Federal Circuit or for
commencing a civil action expires 2 months after a
decision on a request for rehearing orreconsideration
(37 CFR1.304(a».
These 2-month periods meet the 60-day requirement
of 35 U.S.C. 142, 145, and 146 except for time
periods which include February 28. In order to comply
with the 60-day requirement, 37 CFR 1.304(b)
provides that an additional day shall be added to any
2-month period for initiating review which includes
February 28. Appeals will always be timely if the
judicial review is initiated within 2 months of the final
decision.
The times specified in 37 CFR 1.304 are calendar
days. If the last day of the time specified for appeal or
commencing a civil action falls on a Saturday, Sun"
day, or a Federal holiday in the Disttict of Columbia,
the time is extended to the next day which is neither a
Saturday, Sunday, nor a Federal holiday (37 CFR
1.304(b».
TIME FOR FILING CROSS-APPEAL OR
CROSS"ACTION
37 CFR.1.304(a) specifies that the time for filing a
cross-appeal ora. cross-action expires. (A) 14 days
after service of the notice of appeal or the summons
and complaint or (B) 2 months after the decision to be
reviewed, whichever is later.
37 CFR 1.304(a) provides that the time for filing
a cross-action expires 14 days after service of the
summons and complaint. The disttict court will determine
whether any cross-action was timely filed since
1200-43 August 2001

MPEP § 1216.01. Nor should the ahovemail service
address be used for noncourt papers, i.e., papers
which are intended to be filed.in the U.S. Patent and
Trademark Office in connection with an application
or other proceeding pending in the U.S. Patent and
Trademark Office. ANY NONCOURTPAPERS
WHICH ARE MAILED TO THE ABOVE MAIL
SERVICE ADDRESS WILL BE RETURNED TO
THE SENDER. NO EXCEPTIONS WILL BE
MADE TO THIS POLICY.
1216.01 Appeals to the Federal Circuit
35 U.S.C. 142. Notice ofappeal.
When an appeal is takento the United States Court of Appeals
for the Federal Circuit, the appellant shall file in the Patent and
Trademark Office a written notice of appeal directed to the Director,
within such time after the date of the decision from which the
appeal is taken as the Director prescribes, but in no case less than
60 days after that date.
35 U.S.C. 143. Proceedings on appeal.
With respect to an appeal described in section 142 of this title,
the Director shall transmit to the United States Court of Appeals
for the Federal Circuit a certified list ofthe documents comprising
the record in the Patent and Trademark Office. The court, may
request that the Director forward the original or certified copies of
such documents during the pendency' of the appeal. In any' reexarnination
case, the Director shall submit to 'the court in writing
the grounds for the decision of the Patentand Trademark Office,
addressing all the issues involved in the appeal. The court shall,
before hearing an appeal, give notice of the time and place of the
hearing to the Director and the parties in the appeal.
35 U.S.C. 144. Decision on appeal.
The United States Court of Appeals for the federal Circuit
shall review the. decision from which an appeal is. taken on the
record before the Patent and Trademark Office. Upon its determination
the court shall issue to the Director its mandate and opinion,
whichshall be entered of record in the Patent and Trademark
Office and shall govern the furtherproceedings in the case,
37 CFR 1.302. Notice ofappeal.
(a) When an appeal is taken to the U.S. Court of Appeals for
the Federal Circuit, the appellant shall give notice thereof to the
Commissioner within the time specified in § 1.304.
(b) In interferences, the notice must be served as provided in
§ 1.646.
(c) A notice of appeal, if mailed to the Office, shall be
addressed as follows: Box 8, Commissioner of Patents and Trademarks,
Washington, DC 20231.
Filing an appeal to the Federal Circuit requires that
the applicant, the owner of a patent involved in a reexamination
proceeding, or a party to an interference
APPEAL 1216.01
proceeding: (A) file in the U.S. Patent and Trademark
Office a written notice of appeal (35 U.S.C. 142)
directed to the Commissioner and (B) file with the
Clerk of the Federal Circuit a copy of the notice of
appeal and pay the docket fee for the appeal, as provided
by Federal Circuit Rule 52. 37 CPR 1.301.
For a notice of appeal to be considered timely filed
in the U.S. Patent and Trademark Office, it must: (A)
actually reach the U.S. Patent and Trademark Office
within the time specified in 37 CFR 1.304 (including
any extensionslor(B) be mailed within the time spec,
ified in 37 CFl\ 1.304 (including any extensions) by
"Express Mail" in accordance with 37 CPR 1.10.
A Notice of Appeal.to the Federal Circuit should
not be mailed to the Commissioner, the Board or the
examiner. Nor should it be mailed to the Solicitor's
mail service address for court papers given in MPEP
§ 1216. Instead, it should be filed in the U.S. Patent
and Trademark Office in anyone of the following
ways:
(A) By mail addressed as follows, in which case
the notice of appeal must actually reach the U.S.
Patent and Trademark Office by thedue date:
Commissioner of Patents and Trademarks
Box 8
Washington, DC 20231
Attention: Office of the Solicitor
(B) By "Express Mail" (U.S. Postal Service only)
under 37 CFR 1.10 addressed as follows, in which
case the notice of appeal is deemed filed on the "datein"
on the "Express Mail" mailing label:
Commissioner of Patents and Trademarks
Box 8
Washington, DC 20231
Attention: Office of the Solicitor
(C) By hand to the Office of the Solicitor, 2121
Crystal Drive, Suite 714, Arlington, VA 22202.
A copy of the notice of appeal and the docket fee
should be filed with the Clerk of the Federal Circuit,
whose mailing and actual address is:
U.S. Court of Appeals for the Federal Circuit
717 Madison Place, N.W,
Washington, DC 20439
1200-45 August 2001

1216.01 MANUAL OF PATENT EXAMINlNG PROCEDURE
The Solicitor, prior to a decision by the Federal Circuit,
may request that the case be remanded to the
U.S. Patent and Trademark Office and prosecution
reopened. See MPEP § 1214.07.
STANDARDS OF REVIEW BY THE FEDERAL
CIRCUIT
In light of the Supreme Court decision in Dickinson
v. Zurko, 527U.S. 150,50 USPQ2d 1930 (1999),
holding that the Federal Circuit must apply one of
the standards set forth in the Administrative Procedure
Act ("APA"), the Federal Circuit adopted the
"substantial evidence" standard for reviewing factfinding
by the Board of Patent Appeals and Interferences,
In re Gartside, 203 F,3d 1305, 53 USPQ2d
1769 (Fed.Cir. 2000). The "substantial evidence"
standard asks whether the agency action, findings, and
conclusions were supported by substantial evidence,
or, in other words, whether a reasonable factfinder
could have arrived at the agency's decision. The
Supreme Court has described "substantial evidence"
as "more than a mere,scintilla. It means SUch relevant
evidence as a reasonable mind might acceptas ade,
quate to support a conclusion.... Mere uncorroborated
hearsay or rumor does not constitute substantial
evidence." Consolidated Edison Co. v. NLRB, 305
U.S. 197,229-30 (1938)(citations omitted).
The Federal Circuit uses the de novo standard for
reviewing questions of law. See e.g., In re Rouffet,
149 F,3d 1350, 1355, 47 USPQ2d 1453, 1455 (Fed.
Cir.1998).
When the issue to be decided is a question of
law based on underlying findings of fact (e.g., obviousness
under 35 U.S.C. 103, enablement under
35 U.S.c. 112,first paragraph, or conception of an
invention for purposes of 35 U.S.C. 102(g)), the
Board's legal conclusion is reviewed without formal
deference, while the subsidiary factual findings are
reviewed for substantial evidence.
OFFICE PROCEDURE FOLLOWING DECI.
SION BY THE FEDERAL CIRCUIT
After the Federal Circuit has heard and decided the
appeal, an uncertified copy of the decision is sent to
the U.S. Patent and Trademark Office and to the
appellant and appellee (if any).
In due course, the Clerk ofthe Federal Circuit forwards
to the U.S. Patent and Trademark.Office acerti-
August 2001
1200-46
fied copy of the court's decision: This certified copy is
known as the "mandate." The mandate is entered in
the file of the application, reexamination or interference
which was the subject of the appeal. The date of
receipt of the mandate by the U.S. Patent and Trademark
Office marks the conclusion of the appeal, i.e.,
the termination of proceedings as that term is used in
35 U.S.C. 120.See 37 CFR 1.l97(c),or "termination
of the interference" as that term is used in 35 U.S.c.
135(c).
The Federal Circuit's opinion mayor may not be
precedential. Whether or not the opinion is precedential,
the U.S. Patent and Trademark Office will not
give the public access to the administrative record of
an involved application, or to the file of an interference,
unless it is otherwise available to the public
under 37 CFR 1.11. However, since the court record
in a35 U.S.C. 141 appeal generally includes a copy of
at least part of the application, such may be inspected
at the Federal Circuit. In re Mosher, 248 F,2d 956, 115
USPQ140 (CCPA 1957).
In an ex parte appeal, after the mandate is entered
in the application or reexatnination file, the file is then
returned to the appropriate U.S. Patent and Trademark
Office official forfurther proceedings consistent with
the mandate. See, MPEP § 1214.06 for handling of
claims dependent on rejected claims.
A. All Claims Rejected
If all claims in the case stand rejected, proceedings
in the case are considered terminated on the date of
receipt of the Federal Circuit's mandate. Because the
case is no longer considered pending, it is ordinarily
not open to subsequent amendment and prosecution
by the applicant. Continental Can Company v.
Schuyler, 326 F, Supp. 283, 168 USPQ 625 (D.D.C.
1970). However, exceptions may occur where the
mandate clearly indicates that further action in the
U.S. Patent and Trademark Office is to be taken in
accordance with theFederal Circuit's opinion.
B. Some Claims Allowed
Where the case includes one or more allowed
claims, including claims allowed by the examiner
prior to appeal and claims whose rejections were
reversed by either the Board orthe court, the proceedings
are considered terminated only as to any claims
which still stand rejected. It is not necessary for the

applicant or patent owner to cancel the rejected
claims, since they may be canceled by the examiner in
an examiner's amendment or by an appropriate nota"
tion in the margin of the claims, to avoid confusion to
the printer. Thus, if no formal matters remain to be
attended to, the examiner will pass the application to
issue forthwith on the allowed claims or, in the case
of a reexamination, will issue a "Notice of Intent to
Issue a Reexamination Certificate and/or Examiner's
Amendment." See MPEP § 2287. The examiner
should set forth the reasons for allowance, referring to
and incorporating a copy of the appellate brief and the
court decision. See MPEP § 1302.14.
If formal matters remain to be attended to, the
exatIliner promptly should take appropriate action on
such matters, such as by an examiner's amendment or
by an Office action setting a I-month (but not less
than 30-day) shortened statutory period for reply.
However, the application or reexatIlination proceeding
is considered closed to further prosecution except
as to such matters.
C. Remand
Where the decision of the court brings up for action
on the merits claims which were not previously considered
on the merits (such as a decision reversing a
rejection of generic claims in an application containing
claims to nonelected species), the examiner will
take the case up for appropriate action on the matters
thus brought up.
D. Reopening ofProsecution
In rare situations it may be necessary to reopen
prosecution of an application after a decision by the
Federal Circuit. Any Office action proposing to
reopen prosecution after a decision by the Federal
Circuit must be forwarded to the Office of the Deputy
Commissioner for Patent Examination Policy for
written approval, which will be indicated on the
Office action.
DISMISSAL OF APPEAL
After an appeal is docketed in the Federal Circuit,
failure to prosecute the appeal, such as by appellant's
failure to file a brief, may result in distIlissal of the
appeal by the court. Under particular circumstances,
the appeal also may be dismissed by the court on
motion of the appellant and/or the ComtIlissioner.
APPEAL 1216.02
The court proceedings are considered terminated as
of the date of the mandate. After distIlissal, the action
taken by the exatIliner will be the same as set forth
above under the heading "Office Procedure Following
Decision by the Federal Circuit."
In the event of a distIlissal for a reason other than
failure to prosecute the appeal, the status of the application,
reexamination proceeding or interference must
be detertIlinedaccording to the circumstances leading
to the distIlissal.
1216.02 Civil Suits Under 35 U.S.C. 145
A 35 U.S.C. 145 civil action is commenced by filing
a complaint in the U.S. District Court for the District
of Columbia within the time specifiedin 37 CFR
1.304 (see MPEP § 1216). Furthermore, copies of the
complaint and summons must be served in a timely
manner on the Solicitor, the U.S. Attorney for the District
of Columbia, and the Attorney General in the
manner set forth in Rule 4(i) of the Federal Rules of
Civil Procedure. Regarding timely service, see Walsdorf
v. Comm'r, 229 USPQ 559 (D.D.C. 1986) and
Hodge v. Rostker, 501 F, Supp. 332 (D.D.C. 1980).
When a 35 U.S.C. 145 civil action is filed, a notice
thereof is placed in the application or reexamination
file, which ordinarily will be kept in the Solicitor's
Office pending termination of the civil action.
In an action under 35 U.S.c. 145, the plaintiff may
introduce evidence not previously presented to the
U.S. Patent and Trademark Office. However, plaintiff
will be precluded from presenting new issues, at least
in the absence of some reason of justice put forward
for failure to present the issue to the U.S. Patent and
Trademark Office. DeSeversky v. Brenner, 424 F,2d
857, 858, 164 USPQ 495, 496 (D.C. Cir. 1970);
MacKay v. Quigg, 641 F, Supp. 567, 570, 231 USPQ
907, 908 (D.D.C. 1986). Furthermore, new evidence
is not adtIlissible in district court where it was available
to the parties but was withheld from the U.S.
Patent and Trademark Office as a result of fraud, bad
faith, or gross negligence. DeSeversky, 424 F,2d at
858 n.5, 164 USPQ at 496 n.5; California Research
Corp. v. Ladd, 356 F,2d 813, 821 n.l8, 148 USPQ
404,473 n.18 (D.C. Cir. 1966); MacKay, 641 F, Supp.
at 570, 231 USPQ at 908; Monsanto Company v.
Kamp, 269 F, Supp. 818, 822, 154 USPQ 259,
260 (D.D.C. 1967); Killian v. Watson, 121 USPQ 507,
507 (D.D.C. 1958).
1200-47 August 2001

1216.02 MANUAL OF PATENT EXAMINING PROCEDURE
Upon termination of the civil action, a statement of
thecourt's final disposition of the case is placed in the
application orreexaminatiou file, which is then
returned to the examiner for action in accordance
with the same procedures as follow termination ofa
35 U.S.C. 141 appeal. See MPEP § 1216.01. 37 CPR
1.197(c) provides that a civil action is terminated
when the time to appeal the judgment expires. Where
the exact date when the civil action was terminated is
material, the date may be ascertained from the Solicitor's
Office.
The procedures to be followed in the U.S. Patent
and Trademark Office after a decision; remand, or dismissal
of the' case by the'district conrt are the same as
the procedures followed with respect to 35 U.S.C. 141
appeals. See MPEP § 1216.01.
August2001
1200-48
Where a civil action involving an application has
been dismissed before coming to trial, the application
will not be opened to the public unless it is otherwise
available to the public under 37 CPR 1.11. However,
the complaint and any other court papers not under a
protective order, are open to the public and maybe
inspected at the Office of the Clerk for the U.S. DistrictCourtfor
the District of Columbia, located in the
U.S. Courthouse, 333 Constitution Avenue, N.W.,
Washington, DC 20001. The court papers in the
Office of the Solicitor are not generally made available
for public inspection.
Any subpoena by the district court for an application
or reexamination file should be hand-carried to
the Office of the Solicitor.
•••••••••••••••••••••••••••••

1302.02 MANUAL OFPATENT EXAMINlNG PROCEDURE
Examiner Note:
An example should be given as to the specific sheets or drawing
figures and portionsof the specification which-should he cancelled.
Ifdrawing figures are to be cancelled, applicant should be
reminded that subsequent figures must be renumbered.
'f{ 13.08 Disclosed Subject Matter Outside the Bounds of
the Claims
The application contains disclosure entirely outside the bounds
of the allowed claims. Applicant is required to modify the brief
summary of the invention and restrict the descriptive matter so as
to be in hannony with the claims (MPEP § 1302.01).
There should be clear support or antecedent basis in
the specification for the terminology used in the
claims. Usually, the original claims follow the nomenclature
of the specification; but sometimes in amending
the claims or in adding new claims, applicant
employs terms that do not appear in the specification.
This may result in uncertainty as to the interpretation
to be given such terms. See MPEP § 608.01(0). It
should be noted, however, that exact terms need not
be used in haec verba to satisfy the written description
requirement of the first paragraph of 35 U.S.C.
112. Eiselstein v. Frank, 52 F.3d 1035, 1038, 34
USPQ2d 1467, 1470 (Fed. Cir. 1995); In re Wertheim,
541 F.2d 257, 265, 191 USPQ 90, 98 (CCPA 1976).
See also 37 CFR 1.121(e) which merely requires substantial
correspondence between the language of the
claims and the language of the specification.
Where a copending application is referred to in the
specification, the examiner should ascertain whether
it has matured into a patentor has become abandoned,
and "now abandoned" or the patent number should be
added to the specification.
The claims should be rennmbered as required by
37 CFR 1.126, and particular attention .should be
given to claims dependent on previous claims to see
that the numbering is consistent. An examiner's
amendment should be prepared if the order of the
claims is changed. See MPEP § 608.01(j),
§ 608.01(n), and § 1302.04(g).
The abstract should be checked for an adequate and
clear statement of the disclosed invention. See MPEP
§ 608.01(b). The length of the abstract should be limited
to 150 words.
The title should also be checked. It should be as
short and specific as possible. However, the title
should be descriptive of the invention claimed, even
though a longer title may result. If a satisfactory title
is not supplied by the applicant, the examiner may
August 2001
1300-2
change the title on or after allowance. See MPEP
§ 606 and § 606.01.
No pencil notes should be made in the application
file by the examiner. Any notes in the file must be
erased when the application is passed to issue.
All amendments should be reviewed to assure that
they were timely filed.
1302.02 Requirement for a
Rewritten Specification
Whenever interlineations or cancellations have
been made in the specification or amendments which
would lead to confusion and mistake, the examiner
should require the entire portion of specification
affected to be rewritten before passing the application
to issue. See 37 CFR 1.125 and MPEP § 608.01(q).
Form paragraph 13.01 should be used when making
such a requirement.
'f{ 13.01 Requirementfor Rewritten Specification
The interlineations or cancellations made in the specification
or amendments to the claims could lead to confusion and mistake
during the issue and printing processes. Accordingly, the portion
of the specification or claims as identified below is required to be
rewritten before passing the case to issue. See 37 CFR 1.125 and
MPEP § 608.01(q).
Examiner Note:
1. Specific discussion of the sections of the specification or
claims required to be rewritten must be set forth.
2. See form paragraph 6.28.01 for a substitute specification.
1302.03 Notice of AIIowabiIity
A Notice of Allowability form PTOL-37 is used
whenever an application has been placed in condition
for allowance.. The date of any communication and/or
interview which resulted in the allowance should be
included in the notice.
In all instances, both before and after final rejection,
in which an application isplaced in condition for
allowance, applicant should be notified promptly of
allowability of the claims by a Notice of Allowability
PTOL-37. If delays in processing the Notice of
Allowability are expected, e.g., because an extensive
examiner's amendment must be entered, and the end
of a statutory period for reply is near, the examiner
should notify applicant by way of an interview that
the application has been placed in condition for allowance,
and an Interview Summary PTO-413 should be
mailed. Prompt notice to applicant is important

ecause it may avoid an unnecessary appeal and act as
a safeguard against a holding of abandonment.
1302.04 Examiner's Amendments
and Changes
Except by formal examiner's amendment duly
signed or as hereinafter provided.mo corrections, erasures,
or interlineations may be made in the body of
written portions of the specification or any other
paper filed in the application for patent. (See 37 CFR
I.l2I.)
An informal examiner's amendment may be used
for the correction of the following obvious errors and
omissions only in the body of the written portions of
the specification and may only be made with pen by
the examiner of the application who will then initial in
the margin and assume full responsibility for the
change:
(A) Misspelled words.
(B) Disagreement of a noun with its verb.
(C) Inconsistent "case" of a pronoun,
(D) Disagreement between a reference character
as used in the description and on ..the drawing. .The
character may be corrected in the description but only
when the examiner is certain of the propriety of the
change.
(E) Entry of "PatentNo....,...." to identify a patent
which has been. granted on a U.S. application referred
to. by application number in the specification if the
priority reference is not in an application data sheet.
(F) Entry of "abandoned" if a U.S. patent application
referred to by application number in the specification,
or in the application data sheet has become
abandoned.
(G) Correction of reversed. figure numbers. Garrett
v. Cox, 233 F.2d 343, 345, 110 USPQ 52, 54
(CCPA 1956).
(H) Entryof"Patent Application No " to
identify a patent application in an otherwise allowable
application filed under former 37 CFR 1.60 or
37 CFR 1.62 (see MPEP § 201.11).
(I) Other obvious minor grammatical errors such
as misplaced or omitted commas, improper parentheses,
quotation marks, etc.
(I) Obvious informalities in the application,
other than the ones noted above, or of purely gram,
matical nature.
ALLOWANCE AND ISSUE 1302.04
For applications filed under former 37 CFR 1.60 or
1.62, where a reference to the parent application has
been inadvertently omitted by the applicant, the reference
to the parent application may be. added by an
informal examiner's amendment when the application
is in condition for allowance since snch an application
must claim priority to the prior application. For continuing
applications filed under 37 CFR 1.53(b),
where a reference to the parent application has been
inadvertently omitted by the applicant, an examiner
should not add a reference to the prior application
without the approval of the applicant and a formal
examiner's amendment since applicant may decide to
delete the priority claim in the application filed under
37 CFR 1.53(b). Note that the specification or application
data sheet of an application filed under 37 CFR
I.76 should not contain a reference to the parent
application. SeeMPEP §201.06(d).
When correcting originally filed papers, clean red
ink must be used (not blue or black ink).
A formal examiner's amendment may be used to
correct.all other informalities in the body of the writ,
ten portions of the specification as well as all errors
and omissions in the claims,but such corrections must
be made by a formal examiner's amendment, signed
by the primary examiner, placed in the file and a copy
sent to applicant. The changes specified in the amend'
ment are entered by the technical support staff in the
regularway. A formal examiner's amendment should
include form paragraph 13.02 and form paragraph
13.02.01. Form paragraph 13.02.02 should be used if
an extension of time is required.
'f[ 13.02 Formal Examiner's Amendment
An examiner's amendment to therecord appears below. Should
the changes and/or additions be unacceptable to applicant, an
amendmentmay befiled as provided by 37 CFR 1.312. To ensure
consideration of such an amendment, it MUST be subinitted- no
laterthanthe paymentof the issuefee.
Examiner Note:
This form paragraph is NOTto be used in a reexamination proceeding
(use form paragraph 22.06 instead). .
'f[ 13.02.0,1 Examiner's Amendment Authorized
Authorization for.this examiner's amendment was given in a
telephone interview with [1] on [2].
'f[ 13.02.02 Extension ofTime and Examiner's Amendment
Authorized by Telephone
An extension of time under 37. CFR 1.136(a) is required in
order to makean examiner's amendment whichplaces this appli-
1300"3 August2001

1302.04 MANUAL OF PATENT EXAMINING PROCEDURE
cation in condition for allowance. During a telephone conversation
conducted on [1], [2] .requestedan extension of time for [3]
MONTH(S) and authorized the Commissioner to charge J)eposit
Account No. [4] the required fee of $ [5] for this extension arid
authorized the following examiner'samendrnent. Should the
changes andlor additions be unacceptable to applicant, an amendment
may be filed as provided by 37 CPR 1.312.To ensure consideration
of such an amendment, it MUSTbe submitted no later
than the payment of the issue fee.
Examiner Note:
See MPEP § 706.07(f), item (1) which explains when an extension
of time is needed in order to make.amendrnentsro place the
application in condition for allowance.
Although 37 CFR 1.121 has been amended to
require amendments to the specification/claims to be
made by replacement paragraphs/claims, 37 CFR
1.12l(g) permits the Office to make amendments to
the specification, including the claims, by examiner's
amendments without paragraph/section/claim replacement
in the interest of expediting prosecution and
reducing cycle time. Examiners may continue to make
additions or deletions of subject matter in the specification,
including the claims, in examiner's amendments
by instructions .to make the change at a precise
location in the specification and/or the claims.
As an alternative, the examiner's amendment utilizing
paragraph/claim replacement can be created by
the examiner with authorization from the applicant.
The examiner's amendment can also be created from
a facsimile transmission or e-mailed amendment
received by the examiner and referenced in the examiner'
s amendment and attached thereto. Any subject
matter, in clean version form (containing no brackets
or underlining), to be added to the specification/
claims should be set forth separately by applicant in
the e-mail or facsimile submission apart from the
remainder of the submission. A clean version of a
paragraph/claim, or portion of a paragraph/claim, submitted
by applicant in a fax or e-mail, should be
printed and attached to the examiner's amendment
and may be relied ou as part of the examiner's amendment.
The examiner should mark "requested" on the
eutire attachment to indicate that the fax or e-mail was
requested by the examiner, so as to not lead to a
reduction in patent term adjustment (37 CFR
1.704(c)(8». As the attachment is made part of the
examiner' s amendment, it does not get a separate
PALM code and will not trigger any reduction in
patent term adjustment. A paper copy of the entire e-
August 2001
1300-4
mail or facsimile submission should be entered in the
application file. Examiners are not required to electronically
save any e-mails once any. e-mails or
attachments thereto are printed and become part of an
application file record. The e-mail practice that is an
exception for examiner's amendments is restricted to
e-mails to the examiner from the applicant and should
not be generated !u the examinerto the applicant
unless such e-mails are in compliance with all of the
requiremeuts set out in MPEP § 502.03.
The amendment or cancellation of claims by formal
examiner's amendment is permitted when passing an
application to issue where these changes have been
authorized by applicant (or his/her attorney or agent)
in a telephone or personal interview. The. examiner's
amendment should indicate that the changes were
authorized, the date and type (personal or telephone)
of interview, and with whom it was held.
The examiner's amendment practice may be used
to make charges against deposit accounts or credit
cards under special conditions.
An examiner's amendment can be used to make a
charge against a deposit account, provided prior
approval is obtained from the applicant, attorney or
agent, in order to expedite the issuance of apatent on
an application otherwise ready for allowance. When
such an examiner's amendment is prepared, the prior
approval is indicated by identification of the name of
the authorizing party, the date and type (personal or
telephone) of authorizatioll, the purposefor which the
charge is made (additional claims, etc.), and the
deposit account number.
Charges can also be made against a credit card in an
examiner's amendment. Once the examiner· has
informed applicant of the required charges, applicant
must submit by facsimile, a properly completed and
signed PTO-2038, authorizing the necessary charges.
After completion of processing in the Office of
Finance, form PTO-2038 will be removed from the
record. Office employees may not accept oral (telephonic)
instructions to complete the Credit Card Payment
Form or otherwise charge a patent process or
trademark process fee (as opposed to information
product or service fees) to a credit card. Further identifying
data, if deemed necessary and requested by the
applicant, should also be included in the examiner's
amendment.

Form paragraph 13.06 may be used to charge an
extension of time fee in an examiner's amendment.
'I 13.06 Extension ofTime by Examiner's Amendment
An extension of time under 37 CFR 1.136(a) is required to
place this application in conditionfor allowance. During, a telephone
conversation ,conducted on [1], [2l,request¢ an extension
of time for [3] MONTH(S) and authorized the Commissioner to
charge Deposit Account No. [4] the required fee of $ [5] for this
extension.
Examiner Note:
1. See MPEP § 706.07(f), item 10 which explains when an
extensionof time is neededin order to makeamendments to place
the application-in condition for allowance.
2. When an examiner's amendment is also authorized;use form
paragraph 13.02.02 instead.
A change in the abstract may. be made by examiner's
amendment.
The fact that applicant is entitled to an earlier U,S.
effective filing date under 35 U.S.C. ]20, ]2], or
365(c) or 35.U.S.C. 119(e) is sometimesoverlooked,
To minimize this possibility, the statement that, "This
is a division (continuation, continuation-in-part) of
Application Number -/---, filed -c-" should appear as
the first sentence of the description, or in an application
data sheet of applications other than CPAs claiming
priority under 35 U.S.c. 120, except in the case of
design applications where it should appear as set forth
in MPEP § 1504.20. The request for a CPA filed
under 37 CFR 1.53(d) isitself the specific reference,
as required by 35 U.S.c. 120 and 37 CFR 1.78(a)(2),
to every application assigned the same application
number identified in the' request. In the case of an
application filed under 37 CFR 1.53(b) as a division,
continuation or continuation-in-part ofa CPA, there
would be only one reference to the series of applications
assigned the same application number with the
filing date cited being that of the original non-continued
application, In applications claiming priority
under 35 U.S.C. 119(e), a statement such as "This
application claims the benefit of U.S. Provisional
Application No. 60/ - --, filed - --" should appear as
the first sentence ofthe description or in an.application
data sheet. In addition, for an application which is
claiming the benefit under 35 U.S.C. 120 ofa prior
application which in tum claims the benefit of a provisional
application under 35 U.S.c. 119(e), a suiiable
reference would read, "This application is a continuation
of U.S. Application No. 08/ - --, filed - --, now
abandoned, which claims the benefit of U.S. Provi-
ALLOWANCE AND ISSUE
1302.04
sional Application No. 60/ - -co filed - '-." The status
(whether patented or abandoned) of the nonprovisional
application(s) .for which priority is claimed
should also be included. Any such statements appear,
ingelsewherein the specification should be relocated
or made in an application data sheet. The technical
support staff indicates the change for the printer in the
appropriate margin when checkingnew applications
for matters of form.
References cited as being of interest by examiners
when passing an application to issue will not be supplied
to applicant. The references will' be cited as
usual on form PTO-892, a copy of which will be
attached to the Notice ofAllowability, formPTOL-37.
Where an application is ready for issue exceptfor a
slightdefect in the drawing not involving a change in
structure, the examiner will prepare a letter indicating
the change to be made and note in pencil on the draw'
ing the addition or alteration to be made. See MPEP
§ 608.02(w).
No. other changes may be made by any person in
any record of the .U.S. Patent and Trademark office.
without the written approval of the Commissioner of
Patents and Trademarks.
In reviewing the application, all errors should be
carefully noted. Jt is not necessary that the language
be the best; it is, however, essential that.it be clear in
meaning, and free. from errors in syntax. Any necessary
examiner' samendment is usually made at the
time an application is being prepared for issue by the
examiner. However, the need .for such may not be
noted until after the proof of the patent is read and the
application is sent to the examiner with a "printer
waiting" 'slip (form PTO-97). A copy of any formal
examiner's amendment is sent to applicant even if the
application is already in the printer's hands. See
MPEP § 1309.02.
Examiners will not cancel claims on the basis of an
amendment which argues for certain claims and, alternatively,
purports to authorize their cancellation by
the examiner if other claims are allowed. See generally
In re Willingham, 282 F.2d 353, 356, 127 USPQ
211, 215 (CCPA 1960).
In all instances, both before and after final rejection,
in which an application is placed in condition for
allowance as by an interview or amendment, applicant
should be notified promptly of this fact by means of a
1300-5 Aligust2001

1302.04(a)
Notice of Allowability (PTOL-37). See MPEP §
714.13 and § 1302.03.
If after reviewing, screening, or surveying an
allowed application in the Office of Patent Quality
Review, an error or omission of the type noted in
items (A) through (I) under the second paragraph of
this section is noted, the error or omission may be corrected
by the Patentability Review Examiner in the
same manner as set forth in the second paragraph.
Since all other obvious iuformalities may only be corrected
.by a formal examiner's amendment, if the
Office of Patent Quality Review discovers any such
informality, the Patentability Review Examiner will
return the application to the Technology Center (TC)
personnel via the TC Director suggesting, as appropriate,
.specific changes for approval and correction by
the examiner through the use of an examiner's amendment.
1302.04(a) Title oflnvention
Where the title of the invention is not specific to the
invention as claimed, see MPEP § 606.01.
1302.04(b) Cancellation of
Nonstatutory Claim
When a case is otherwise in condition for allowance
the examiner may cancel an obviously nonstatutory
claim such as one to "A device substantially as
shown and described:' Applicant should be notified
of the cancellation of the claim by an examiner's
amendment.
1302.04(C) Cancellation of Claims to
Nonelected Invention
See MPEP § 821.01 and § 821.02.
1302.04(d) Cancellation of Claim Lost
in Interference
See MPEP § 2363.03.
1302.04(e) Cancellation of Rejected
Claims Following Appeal
See MPEP § 1214,06, § 1215.03, and§ 1215.04.
August 2001
MANUAL OF PATENT EXAMINING PROCEDURE
1300-6
1302.04(f) Data of Copending Application
Referred to Should Be
Brought Up-to-Date
Where a patent application which is ready for issue
refers by application number to a U.S. nonprovisional
application which has matured into a patent, the
examiner is authorized to enter the patent number
without a formal examiner's amendment. This entry
should be in the following form: ", Patent No ".
The entry is to be initialed and dated in the margin by
the examiner to fix responsibility for the same. The
entry and the initials should be in red ink.
If the nonprovisional application referred to has
become abandoned, the entry "abandoned" should be
made in red ink, and initialed and dated by the examiner
in the margin. A formal examiner's amendment is
not required.
1302.04(g) Identification of Claims
To identify a claim, a formal examiner's amendment
should refer to it by the original number and, if
renumbered in the allowed application, also by the
new number.
1302.05 Correction of Drawing
Where an application otherwise ready for issue
requires correction of the drawing, the application is
processed for allowance in the Technology Center and
then forwarded to the Publishing Division. Any
papers subsequently filed by the applicant, .including
corrected drawings, are forwarded to the Publishing
Division in order to be matched with the application
file.
1302.05(a) Original Drawings Cannot
Be Located
When the original drawings cannot be located and
the application is otherwise in condition for allowance,
no "Official Search" need be undertaken. A
replacement drawing should be obtained from the
Office of Initial Patent Examination's records of the
application as originally filed. If the reproduced drawings
are not acceptable for publishing, applicant
should be required to submit corrected drawings. An
attachment to the Notice of Allowability should

explain the problem and require the corrected drawings.
1302.06 Prior Foreign Application
See MPEP § 201.14(

1302.10 MANUAL OF PATENT EXAMINING PROCEDURE
modification has been approved, the examiner must
make sure that the information on the file wrapper
label or PALM bib-data sheet and in the PALM data
base are current and up to date. If the PALM system
has not been updated, the application must be forwarded
to the Office of Initial Patent Examination
Customer Corrections, accompanied by a completed
Application Branch Data Base Routing Slip, with an
explanation of the correction to be made. Examiners
should also review the data regarding prior provisional
and foreign applications for accuracy.
The class and subclass and the name of the examiner
which are written in pencil on the file wrapper
should correspond to the class and subclass in which
the patent will issue and to the nameof the examiner
preparing the application for issue.
See MPEP § 202.02 for notation as to parent or
prior U.S. application, including provisional application,
to be placed on file wrapper.
See MPEP § 202.03 for notation as to foreign
patent application to be placed on file wrapper.
See MPEP § 1302.13for name of examiner.
Examiners, when preparing an application for
issue, are to record the number of the claim selected
for printing in the Official Gazette in the box labeled
"PRINT CLAIM" on the face of the file wrapper.
The claim or claims should be selected in accordance
with the following instructions:
(A) The broadest claim should be.selected.
(B) Examiners should ordinarily designate bnt
one claim on each invention, although when a plurality
of inventions are claimed in an application, additional
claims up to a maximum of five may be
designated for publication.
(C) A dependent claim should not be selected
uuless the independent claim on which it depends is
also printed. In the case where a multiple dependent
claim is selected, the entire chain of claims for one
embodiment should be listed.
(D) In reissue applications, the broadest claim
with changes or the broadest additional reissue claim
should be selected for printing.
When recording this information in the box provided,
the following items should be kept in mind:
(A) Write the claim number clearly in black ink.
(B) If multiple claims are selected, the claim
numbers should be separated by commas,
August. 2001
1300-8
(C) The claim designated must be referred to by
using the renumbered patent claim number rather than
the original application claim number.
Examiners, when preparing an application for
issue, are to record the figure selected for printing in
the Official Gazette in the box labeled "Print Fig." on
the face of the file wrapper. It is no longer necessary
for drawings to be stamped approved or for the examiner
to write this information in the space provided by
the Draftsperson's stamp On the margin of the sheet of
drawing.
Ordinarily a single figure is selected for printing.
This figure should be consistent with the claim to be
printed in the Official Gazette. The figure to be
printed in the Official Gazette must not be one that is
labeled "prior art." If there is no figure illustrative of
or helpful in understanding the claimed invention, no
figure need be selected. "None" may be written in the
box labeled "Print Fig." on the face of the file wrapper.
1302.10 Issue Classification Notations
See MPEP § 903.07, § 903.07(b) and § 903.09 for
notations to be applied in the issuing classification
boxes on the face of the file wrapper, or on the blue
issue classification slip for series 081 and earlier applications.
In all reissue applications, the number of the original
patent which is being reissued should be placed in
the box provided therefor below the box for the applicant'sname.
1302.11 Reference to Assignment
Division
The practice of referring certain applications to the
Assignment Division when passing them to issue is
no longer followed. See MPEP § 303.
1302.12 Listing of References
All references which have been cited by the examiner
during the prosecution, including those appearing
in Board of Patent Appeals and Interferences decisions
or listed in the reissue oath, must be listed on
either a form PTO-892 or PTO"1449. All such reference
citations will be printed in the patent. References
listed by a patent examiner on a "Notice of References
Cited," form PTO-892, will be indicated with an

art references," with further amplification as necessary.
Stock paragraphs with meaningless or uninformative
statements of the reasons for the allowance
should not be used. The statement of reasons for
allowance by the examiner is intended to provide
information equivalent to that contained in a file in
which the examiner's Office actions and the applicant's
replies make evident the examiner's reasons for
allowing claims.
Examiners are urged to carefully carry out their
responsibilities to see that the application file contains
a complete and accurate picture of the Office's consideration
of the patentability ofthe application.
Under the rule, the examiner must make a judgment
of the individual record to determine whether or not
reasons for allowance should be set out in that record.
These guidelines, then, are intended to aid the .examiner
in making that judgment. They comprise. illustrative
examples as to applicability and appropriate
content.They are not intended to be exhaustive..
EXAMI'LES OF WHEN IT IS LIKELY THAT A
STATEMENT SHOULD. BE ADDED TO THE
RECORD
(A) Claims are allowed on the basis of one (or
some) of a number of arguments and/or affidavits presented,and
a statement is necessary to identify which
of these were persuasive, for example:
(I) When the arguments are presented in an
appeal brief.
(2) When the arguments are presented in an
ordinary reply, with or without amendment of claims.
(3) When both an affidavit urider 37 CPR
1.131 and arguments concerning rejections under
35 U.S.C. 102 and 103 are presented.
(B) First action issue:
(1) Of a noncontinuing application, wherein
the claims are very close to the cited prior.art and the
differences have not been discussed elsewhere.
(2) Of a continuing application, wherein reasons
for allowance are not apparent from the record in
the parent case or clear from preliminary filed matters.
(C) Withdrawal of a rejection forreasons notsuggested
by applicant, for example:
ALLOWANCE AND'ISSUE 1302.14
(I) As a result ofan appeal conference.
(2).When applicant's arguments have been
misdirected or are not persuasive alone and the examiner
comes to realize that a more cogent argument is
available.
(3) When claims are amended to avoid a rejection
under 35 U.S.C. 102, but arguments (if any) fail
to address the question of obviousness;
(D) Allowance after remand from the Board of
Patent Appeals and Interferences.
(E).Allowance coincident with the citation of
newly found. references that are very close to the
claims, but claims are considered patentable thereover:
(I) When reference is found and cited (but not
argued) by applicant.
(2) When reference .is found and. cited by
examiner.
(F) Where the reasons for allowance are of
record but, in the examiner's judgment, are unclear
(e.g., spread throughout the file history) so that an
unreasonable effort would be. requiredto collect them.
(G) Allowance based on. a claim interpretation
which might not be readily apparent, for example:
(I) Article claims in which method limitations
impart patentability.
(2) Method claims in which article limitations
impart patentability.
(3) Claim is so drafted that "nonanalogous't.art
is not applicable.
(4) Preamble or functional language "breathes
life" into claim.
(H) Allowance following decision by the United
States Court of Appealsfor the Federal Circuit or District
Court of the District of Columbia.
The reasons for allowance should refer to and
incorporate the briefs and the court decision.
EXAMPLES OF STATEMENTS OF SUITABLE
CONTENT.
(A) The primary reason for allowance of the
claims is the inclusion of .03 to .05 percent nickel in
ill of the. claims. Applicant's second, affidavit in
example 5 shows unexpected results from this
restricted range.
(B) During two telephonic interviews with applicant's
attorney, Mr.....,...;... on 5/6 and 5110177, the
examiner stated. that applicant's remarks about the
1300-11 August 2001

1302.14 MANUAL OF PATENT EXAMINING PROCEDURE
placement of the primary teaching's grid member
were persuasive, but he pointed out that applicant did
not claim the member as being within the reactor.
Thus, an amendment doing such was agreed to.
(C) The instant application is deemed to be
directed to an nonobvious improvement over the
invention patented in Pat. No. 3,953,224. The
improvement comprises baffle means 12 whose effective
length in the extraction tower may be varied so as
to optimize and to control the extraction process.
(DjUpon reconsideration, this application has
been awarded the effective filing date of application
number -1---. Thus the rejection under 35 U.S.C.
102(d) and 103 over Belgium Patent No. 757,246 is
withdrawn.
(E) The specific limitation as to the pressure used
during compression was agreed to during the telephone
interview with applicants' attorney. During
said interview, it was noted that applicants contended
in their amendment that a process of the combined
applied teachings could notresultin a successful article
within a particular pressure range (see page 3, bottom,
of applicant'samendment). The examiner agreed
and allowed the application after incorporating the
pressure range into the claim.
(F) In the examiner's opinion, it would not have
been obvious to a person of ordinary skill in the art
first to eliminate one of top members 4, second to
eliminate plate 3, third to attach remaining member 4
directly to tube 2 and finally to substitutethismodifiedhandle
for the handle 20 of Nania (see Fig. 1)
especially in view of applicant's use ofterm "consisting;"
(G) The application is allowable for the reasons
set forth on page _c of the decision of the Court of
Appeals for the Federal Circuit, which is hereby
incorporated by reference.As noted therein, and as
argued on page -- of Appellant's brief, the claimed
invention requires a one piece tubular :member
whereas the closest prior art requires a multiple piece
assembly which does not teach or suggest the claimed
invention.
EXAMPLES OF STATEMENTS THAT ARE
NOT SUITABLE AS TO CONTENT
(A) The 3-roll press couple has an upper roll 36
which is swingably adjustable to vary the pressure
selectively against either of the two lower rolls.
August 2001
BOOe12
(NOTE: The significance of this statement may not be
clear if no further explanation is given.)
(B) The main reasons for allowance of these
claims are applicant's remarks in the appeal brief and
an agreement reached in the appeal conference.
(C) The instant composition is a precursor in the
manufacture of melamine resins. A thorough search
of the prior art did not bring forth any composition
which corresponds to the instant composition. The
examiner in the art also did not know of any art which
could be used against the instant composition.
(D) Claims 1-6 have been allowed because they
are believed to be both novel and nonobvious.
The examiner should not include in his or her
statement any matter which does not relate directly to
the reasons for allowance. For example:
(E) Claims 1 and 2 are allowed because they are
patentable over the prior art. If applicants are aware of
better art than that which has been cited, they are
required to call such to the attention of the examiner.
(F) The reference Jonesdiscloses and claims an
invention similar to applicant's. However, a comparison
of the claims, as set forth below, demonstrates the
conclusion that the inventions are noninterfering.
Most instances when the examiner finds a need to
place in the file a statement of the reasons for allowing
a claim or claims will come at the time of allowance.
In such cases, the examiner should (a) check the
appropriate box on the form PTOL-37 and (b) attach
thereto a paper containing the examiner's statement of
reasons for allowance. Such a statement should be
typewritten. The paper should identify the application
number and be clearly labeled "Statement of Reasons
for Allowance." It should also specify that comments
may be filed by the applicant on the statement and
should preferably be submitted with the payment of
the issue fee so as not to delay processing of the application
aud in any event no later thanpayment of the
issue fee.
Form paragraph 13.03 may be used for this purpose.
'j[ 13.03 Reasons for Allowance
The followingis anexaminer's statement of reasons for allowance:
[1]
Any comments considerednecessaryby applicant mustbe submittedno
laterthanthe'payment-ofthe issue fee and,' to avoid processing
delays, should preferably accompany the issue fee. Such

submissions should be clearly labeled "Comments on Statement
of Reasons for Allowance."
Examiner Note:
Do not use this form paragraph in reexamination proceedings,
see form paragraph 22.16.
A statement may be sent to applicant with other
communications, where appropriate, but shonld be
clearly labeled as a "Statement of Reasons for Allowance"
and contain the data indicated above.
Form paragraph 13.13.01 may be used to specify
the reasons for indicating allowable subject matter in
a communication prior to allowance.
'J[ 13.03.01 Reasons for Indication of Ailowable Subject
Matter
The following is a statement of reasons for the indication of
allowable subjectmatter: [1]
Examiner Note:
1. This form paragraph is for use in an Office action prior to
allowance of the application. Use form paragraph 13.03 in the
Notice of Allowability.
2. In bracket 1, provide a detailed statement of the reasoms)
certain claim(s) have been indicated as being allowable or as containing
allowablesubjectmatter.
APPLICANT'S COMMENTS ON THE REA­
SONS FOR ALLOWANCE
The examiner's statement of reasons for allowance
is an important sonrce of prosecution file history. See
Zenith Labs., Inc. v. Bristol-Myers Squibb Co., 19
F.3d 1418, 30 USPQ2d 1285 (Fed. Cir. 1996). The
failure of an applicant to comment on reasons for
allowance may give rise to a presumption of acquiescence
to those reasons, and the negative inferences
that flow therefrom. Applicant may set forth his or her
position if he or she disagrees with the examiner's
reasons for allowance.
Comments filed by the applicant on the examiner's
statement of reasons for allowance, should preferably
be submitted no later than the payment of the issue
fee, to avoid processing delays. Such submissions
should be clearly labeled "Comments on Statement of
Reasons for Allowance." Comments will be entered
in the application file by the Office of Publication
with an appropriate notation on the "Contents" list on
the file wrapper.
ALLOWANCE AND ISSUE
1303
The application file generally will not be returned
to the examiner after the entry of such comments
made byapplicant on the examiner's statement ofreasons
for allowance. Therefore, the absence of an
examiner's response to applicant's comments does not
mean that the examiner agrees with or acquiesces in
the reasoning of such comments. See 37 CPR
1.104(e). While the examiner may review and comment
upon such a submission, the examiner has no
obligation to do so.
1303 Notice of Allowance
37 CFR 1.311. Notice ofAllowance.
(a) If, on examination, it appears that theapplicant is entitled
to a patent under the law, a notice of allowance will be sent to the
applicant at the correspondence address indicated in § 1.33. The
notice of allowance shall specify a sum constituting the issue fee
which mustbe paid within threemonths from the date of mailing
of the notice of allowance to avoid abandonment of the application.
The sum specified in the notice of allowance may also
includethe publication fee, in which case the issue fee andpublication
fee (§ 1.21l(f) mnst both be paid within three months from
the date of mailing of the notice of allowance to avoid abandonment
of the application. This three-month period is not extendable.
(b) An authorization to charge the issue fee or other postallowance
fees set forth in § 1.18 to a deposit account may be filed
in an individual application only after mailing of the notice of
allowance. The submission of either of the following after the
mailing of a notice of allowance will operate as a request to
charge the correct issue fee to any deposit account identified in a
previously filed authorization to charge fees:
(1) An incorrect issue fee; or
(2) A completed Office-provided issue fee transmittal
form (where no issue fee has been submitted).
A Notice of Allowance is prepared and mailed, and
the mailing date appearing thereon is recorded on the
file wrapper.
The U.S. Patent and Trademark Office (USPTO)
has iudicated that if an application is subject to publication
under 37 CPR 1.211, the Notice of Allowance
will require both the issue fee and the publication fee.
See 37 CPR 1.211(e).The USPTO plans to modify the
Notice of Allowance to require both the issue fee and
any required publication fee, but this will not be done
until later in the year 2001. Until then, the USPTO
will mail a separate Notice of Publication Fee Due in
any application that has been assigned a projected
publication date and which has been allowed. The
Notice of Publication Fee Due requires payment of
the publication fee within three months of the mail
1300-13 August2001

1303 MANUAL OF PATENT EXAMINING PROCEDURE
date of the Notice of Publication Fee Due to avoid
abandonment of the application. See "Interim Practice
of Mailing a Notice of Publication Fee Due Separate
August 2001
1300-14
From the Notice of Allowance," 1246 a.G. 166 (July
31,2001).

ALLOWANCE AND ISSUE 1303
. Commissioner for Patents
United States Patent and Trademark Office
Washington, D,C, 20231
WWN.usptO.gov
APPLICATIONNUMBER FILING D,ATE FIRSTNAMEDAPPLICANT AnY. DOCKETNQJfITLE
NOTICE OF PUBLICATION FEE DUE
DATE MAILED:
The above-identified application was filed (including as a Continued Prosecution
Application) on or after November 29, 2000 and a non-publication request in compliance
with 37 CFR 1.213 was not included with the application on filing. Since the application
has been allowed, a publication fee is due.
The fee due is $300.00. No small entity discount is available. See 37 CFR 1.18(d).
The reply to this notice should be mailed to Box ISSUE FEE, Commissioner for Patents,
Washington D.C. 20231.
The publication fee must be submitted within THREE MONTHS from the mailing date of
this notice or the application may be regarded as abandoned .. No.extenslons of time
under 37 CFR 1.136(a) or (b) are available. A replYrnustbefiled to this notice, even if
applicant does not anticipate that the application will be published (e.q., because the
patent has issued and the projected publication date is more than a month after the issue
date of the patent). A proper reply to this notice in such a situation would be a statement
that no fee is now due, citing 37 CFR 1.211(e).
If publication of the application does not occur, any publication fee paid will be refunded,'
if applicant requests a refund. See 37 CFR 1.211(e).
Questions relating to this Notice should be directed to the Office of Patent Publication at
(703) 305-8283.
A copy ofthis notice should be returned with any reply.
1300-15 August 2001

1303.01 MANUAL OF PATENT EXAMINING PROCEDURE
1303.01 Amendment Received After
Allowance
If the amendment is filed under 37 CFR1.312, see
MPEP § 714.15 to § 714.16(e). If the amendment
contains claims copied from a patent, see MPEP
§ 2307.03.
Reference to an Issue Batch Number is no longer
necessary because the Office no longer stores and
tracks applications according to issue batches.
Any paper filed after receiving the Issue Notification
should include the indicated patent number.
1303.02 Undelivered
In case a Notice of Allowance is returned, and a
new notice is sent (see MPEP § 707.13), the date of
sending the notice must be changed in the file to agree
with the date of such remailing.
1303.03 Not Withheld Due to Death
of Inventor
The Notice of Allowance will not be withheld due
to death of the inventor if the executor or administrator
has not intervened. SeeMPEP § 409.01(t).
1304 Amendments After D-I0 Notice
For amendments received after D-IO Notice, see
MPEP § 130.
1304.01 WithholdingFrom Issue of
"Secrecy Order"Applications
"Secrecy Order" applications are not sent to issue
even when all of the claims have been allowed.
Instead of mailing a Notice of Allowance, a D-IO
Notice is sent. See MPEP § 130.
If the "Secrecy Order" in an application is withdrawn
after the D-I0 notice is mailed, the application
should then be treated like an ordinary application in
condition for allowance.
1305 Jurisdiction
Jurisdiction of the application remains with the primary
examiner until the Notice of Allowance is
mailed. However, the examiner may make examiner's
amendments correcting obvious errors, as when
brought to the attention of the examiner by the printer,
August 2001 1300-16
and also may admit amendments under 37 CFR 1.312
which are confined to matters of form in the specification
or claims, or to the cancellation of a claim or
claims. The examiner's action on other amendments
undef37 CFR 1.312 consists of a recommendation to
the Commissioner.
To regain jurisdiction over the application, the
examiner must write a letter to the Commissioner
requesting it. See MPEP § 1308 and § 1308.02.
Once the patent has been granted, the U.S. Patent
and Trademark Office can take no action concerning
it, except as provided in 35 U.S.c. 135,35 U.S.C. 251
through 256, 35 U.S.c. 302 through 307 and
35 U.S.C. 311 through 316.
1306 Issue Fee
The issue fee is due 3 months from the date of the
Notice of Allowance. The amount of the issue fee is
shown on theNotice of Allowance. However, because
the amount of the issue fee due is determined by the
fees set forth in37 CPR 1.18 which are in effect as of
the date of submission of payment of the issue fee, the
amount due may differ from the amount indicated on
the Notice of Allowance. Accordingly, applicants are
encouraged, at the time of submitting payment of the
issue fee, to determine whether the amount of the
issue fee due has changed. The amounts due under
35 U.S.C. 41(a) are reduced by 50 per centum for
small entities.
Applicants and their attorneys or agents are urged
to lise the special fee transmittal form (PTOL-85B)
provided with the Notice of Allowance when submitting
their payments. The PTOL-85B, the issue fee,
and all post allowance correspondence should be
addressed using the mailing address labels provided
with the PTOL-85, "Notice of Allowance and Issue
Fee Due." If mailing address labels were not provided,
all post allowance correspondence should be
addressed "Box Issue Fee."
Applicants and their attorneys or agents may also
fax post allowance correspondence to the correspondence
branch in the Office of Patent Publications (See
MPEP § 1730).
Technology Center personnel should forward all
post allowance correspondence to the Production
Control branch in the Office of Patent Publication.
The papers received by the Publication Control
Branch will be matched with the appropriate applica-

tion and the entire application will be forwarded to the
appropriate Technology Center for processing.
The payment of the issue fee due may be simplified
by using a U.S. Patent and Trademark Office Deposit
Account or a credit card payment with formPTO­
2038 for such a fee. See MPEP509 However, any
such payment must be specifically authorized by reference
to the "issue fee" or "fees due under 37 CFR
1.18."
The issue fee will.be accepted.from the applicant,
assignee, or a registered attorney or agent, either of
record or under 37 CFR 1.34(a).
The Commissioner has no authority to extend the
time for paying the issue fee. Intentional failure to pay
the issue fee within the 3 months permitted by
35 U.S.c. 151 does not amount to unavoidable or
unintentional delay in making payment.
1306.01 Deferring Issuance ofa Patent
37 CFR 1.314. 1ssuance ofpatent.
If applicant timelypays the issue fee, the Officewill issuethe
patent in regularcourse unless the application iswithdrawn from
issue (§ 1.313) or the Office defers issuances of the patent. To
request that the Office defer issuance of a patent; applicant, must
file a petition under this section including the fee set forth in §
1..l7(h) and a showing ofgood andsufficientreasons why it is
necessary- to deferissuance pi the patent.
There is a public policy that the patent will issue in
regular course once the issue fee is timely paid.
37 CFR 1.314. It has been the policy of the U.S.
Patent and Trademark Office to deferissuance of a
patent, upon request, for a period of up to I month
only, in the abseuce of extraordinary circumstances or
requirement ofthe regulations (e.g., 37 CFR 1.177)
which would dictate a longer period. Situatibnslike
negotiation of licenses, time for filing in foreign countries,
collection of data for filing a continuation-inpart
application, or a desire for simultaneous issuance
of related applications are not considered to amount to
extraordinary circumstances.
A petition to defer issuance of a patent is not appropriate
until the issue fee is paid. Issuance of a patent
cannot be deferred after an allowed application
receives a patent number and issue date unless the
application is withdrawn from issue under 37 CFR
1.313(b). The petition to defer is considered at the
time the petition is correlated with the application file
before the appropriate deciding official (MPEP §
1002.02(b)). In order to facilitate consideration of a
ALLOWANCE AND ISSUE 1306.03
petition for deferment ofissue, the petition should be
firmly attached to the Issue Fee Transmittalform
(PTOL-85B) and dearly labeled as a Petition to Defer
Issue; Attention: Office of the Assistant Commissioner
for Patents.
1306.02 Simultaneous Issuance
of Patents
Where applications have been allowed and a Notice
of Allowance and Issue Fee Due (PTOL-85) has been
mailedineach application, arequest forsimultaneous
issuance Will be granted. Unless all the applications
have reached this stage of processing, .or a specific
requirement of the regulations is involved (e.g.,
37 CFR 1.177),areqllest for. simultaneous issuance
generally Will not be granted.
Applicants arid their attorneys who desire the
simultaneousissue of allowed applicationsmust submit
the :request to: Commissioner of-Patents and
Trademarks, Washington, D.C. 20231, Attention:
Office of Patent Publication.
The request must contain the following information
about each .. allQ\vec.l. application for which simultaneous
issue is requested:
(A) Application number,
(B) Filing date,
(C) Name(s) of inventorts),
(D) Title of invention, and
(E).Date of allowance;
Separate copies of the request must accompany
each.Issue Fee Transmittal (PTOL-85B).
1306.03 Practice After Payment of
Issue Fee
Under the. currentpublication process, utility and
reissue patents are issued within about four weeks
after the issue fee is received in the Office, A Patent
number and issue date will be assigned to an application
and an Issue Notification willbe mailed after the
issue fee has been paid and processed by the USPTO.
Because the Issue Notification may be mailed less
than two Weeks before the applicationisexpected to
issue as apatent.iapplicants are advised to file any
continuing application .before. receiving the Issue
Notification.to avoid loss of copendency.
1300-17 August 2001

applicant receives a written communication. from the
Office that the application has been withdrawn from
issue, the issue fee must be timely submitted to avoid
abandonment.
Applicant may also file a continuing application on
or before the day the issue fee is due and permit the
parent application to become abandoned for failure to
pay the issue fee (35 U.S.C. 151).
After the payment ofIssue Fee
Once the issue fee is paid, withdrawal is permitted
only for the reasons stated in 37 CPR l.313(c). The
status of the application at the timethe petition is filed
is determinative of whether the petition is considered
under 37 CFR 1.313(a) or 37 CFR l.313(c). Petitions
under37 CPR l.313(c) tohave an application withdrawn
after payment of the issue fee should be
directed to the Office of Petitions (see MPEP
§ 1002.02(b».
In addition to the specific reasons identified in
37 CFR l.313(c)(l)-(3) applicant should identify
some specific and significant defect in the allowed
application before the application will be withdrawn
from issue. A petition under .37CFR l.313(c) based
on the reason specified in 37 CFR 1.313(c)(2) can
only be filed in utility or plant applications filed on or
after June 8, 1995 because the request for continued
examination (RCE) practice does not apply to these
types of applications filed before June 8, 1995 and
design applications. See MPEP § 706.07(h), subsections
I and IX. Such a petition along with the petition
fee set forth in 37 CFR 1.17(h) must include a request
for continued examination in compliance with
37 CFR 1.114 (e.g., a submission and the fee set forth
in 37 CFR 1.17(e». The continued prosecution application
(CPA) practice under 37CFR 1.53(d) does not
apply to utility or plant applications ifthe prior application
has a filing date on or after May 29, 2000. See
MPEP § 201.06(d). To withdraw from issue a utility
or plant application filed on or after May 29, 2000, an
applicant may wish to file a petition under 37 CPR
1.313(c)(2) with a RCE or under 37 CFR l.313(c)(3)
for the express abandonment of the application in
favor of a continuing application under 37 CFR
1.53(b), but not a CPA under 37 CFR 1.53(d).
Any petition filed under 37 CFR 1.313(b) to withdraw
an application from issue after payment of the
issue fee should be clearly marked "Petition nnder
ALLOWANCE AND ISSUE 1308
37 CPR 1.313(b)" and be either submitted by facsimile
or hand-carried to the Office of Petitions (see
MPEP § 1730 for the facsimile number and location).
The Office cannot ensure that any petition under
37 CFR 1.313(c) will be acted upon prior tothe date
of patent grant. See Filing of Continuing Applications,
Amendments, or Petitions after Payment of
Issue Fee, Notice, 1221 Off. Gaz. Pat. Office 14
(April 6, 1999). Since a RCE(unlike a CPA under
37cFR 1.53(d» is not any type of new application
filing, the Office cannot grant a petition to convert an
untimely RCE to a continuing application under
37 CPR 1.53(b). Therefore, applicants are strongly
cautionedto file any desired RCE prior to payment of
issue fee. In addition, applicants considering filing a
RCE after payment of the issue fee are strongly cautioned
.to call the Office of Petitions to determine
whether sufficient time remains before the patent
issue date to consider (and grant) a petition under
37 CPR 1.313(c) and what steps areneeded to ensure
that a grantable petition under 37 CFR 1.313(c) is
before an appropriate official in the Office of Petitions
in sufficient time to grant the petition before the
patent is issued
WITHDRAWAL FROM ISSUE AT THE INITIA­
TIVE OF THE OFFICE
The Commissioner may withdraw an application
from issue under 37 CFR 1.313 on his or her own initiative.
See Harley v. Lehman, 981 F. Supp. 9, 12,44
USPQ2d 1699, 1702 (D,D.C.. 1997)(adoption of
37 CFR l.313(b). permittingapplications to be withdrawn
from issue under certain narrow circumstances
not directly covered by the statute was not unreasonable).
35 U.S.C. 151 provides that upon payment of
the issue fee, "the patent shall issue." Thus, an application
Cannot be withdrawn from issue after payment
of the issue fee consistent with 35 U.S.C. lSI unless
there has been a determination that at least one of the
conditions specified at 37 CPR 1.313(b)(I) through
(4) exist such thatthe applicant is no longer "entitled
to a patent under the law" as provided in 35 U.S.C.
lSI. See Harley v. Lehman, 981 F. Supp.at 11_12, 44
USPQ2d at 1701_02 (D.D.C. 1997)(Commissioner
may adopt rules permitting applications to be withdrawn
from issue after payment of the issuefee in situations
in which the applicant is not entitled. to a
patent under the law); and see Sampson v. Donn, 466
1300-19 August 2001

1417
1418
Chapter 1400 Correction of Patents
1400.01 Introduction
1401 Reissue
1402 Grounds for Filing
1403 Diligeuce iu Filing
1404 Snbmission of Papers Where Reissue Pateut Is
in LitigatIon
1410 Content of Reissue Application
1410.01 Reissue Applicant, Oath or Declaration, and
Consent of All Assignees
1411 Form of Specification
1411.01 Certificate of Correction or Disclaimer in Original
Patent
1411.02 New Matter
1412 Content of Claims
1412.01 Reissue Claims Must Be for Same General Invention
1412.02 Recapture of Canceled Subject Matter
1412.03 Broadening Reissue Claims
1412.04 Correction ofInventorship
1413 Drawings
1414 Content of Reissue OathlDeclaration
1414.01 Supplemental Reissue Oath! Declaration
1415 Reissue Filing Fees
1415.01 Maintenance Fees on the Original Patent
1416 Offer to Surrender and Return of Original
Patent
Claim for Benefit Under 35 U.S.C. 119(a)-(d)
Notification of Prior/Concurrent Proceedings
and Decisions Thereon, And of Informatiol1
Known To Be Material To Patentahility
1430 Reissue Files Open to the Public and, Notice of
Filing Reissue Announced in, Official Gazette
1431 Notice in Patent File
1440 Examination of Reissue Application
1441 Two-Month Delay Period
1441.01 Protest in Reissue Applications
1442 Special Status
1442.01 Litigation-Related Reissues
1442.02 Concurrent Litigation
1442.03 Litigation Stayed
1442.04 Litigation Involving Patent
1442.05 Cases in Which Stays Were Considered
1442.05(a) Stays Granted
1442.05(b) Stays Denied
1443 Initial Examiner Review
1444 Review of Reissue OathlDeclaration
1445 Reissue Application Examined. in SameManner
as Original Application
1448 Fraud, Inequitable Conduct, or Duty of
Disclosure Issues
1449 Protest Filed in Reissue Where Patent Is in
Interference
1449.01 Concurrent Office Proceedings
1449.02 Interference in Reissue
1450 Restriction and Election of Species
1451 Divisional Reissue Applications; Continuation
Reissue Applications Where the Parent is
Pending
1452 Requestfor Continued Examination of Reissue
1453
1454
1455
1456
1460
1470
1480
1481
1485
Application
Amendments to Reissue Applications
Appeal Brief
Allowance.and Issue
Reissue Review
Effect of Reissue
Public Access of Reissue Applications
Certificates of Correction - Office Mistake
Applicaut's Mistake
Handling of Request for Certificates of
Correction
1490 Disclaimers
1400.01 Introduction
A patent may be corrected or amended in four
ways, namely:
(A) by reissue,
(B) by the issuance of a certificate of correction
which becomes a part ofthe patent,
(C) by disclaimer, and
(D) by reexamination.
The first three ways are discussed in this chapter
while the fourth way (reexamination) is discussed in
MPEP Chapter 2200.
1401 Reissue
35 U.s.c. 251. Reissue ofdefective patents.
Whenever any patent is, through error without any deceptive
intention, deemed wholly or partly inoperative or invalid, by rea:"
son of a defective specification or drawing, or by reason of the
patentee claiming more or less then he had a right to claim in the
patent, the Director shall, on the surrender ofsuch patent and the
payment. of the fee required- by law, reissue the. patent for. the
invention disclosed in the original patent, and in accordance with
a newand amended application, for the unexpired part of the term
of the: original patent. No new matter shall be introduced into the:
application for reissue.
The Director may issue several reissued patents for distinct and
separate parts of the thing patented, upon demandof the applicant,
1400-1 August2001

the 'patent to be reissued was filed on or after November
29, 2000, the reissne applicant will have to file a
petition for an unintentionally delayed priority claim
under 37 CFR 1.55(c) in addition to filing a reissne
application. See MPEP § 201.l4(a).
Correction of failure to adequately claim priority
under 35 U.S.C. 120 in an earlier filed copending U.S.
Patent application was held a proper gronnd for reissue.
Sampson v. Comm'r Pat., 195 USPQ 136, 137
(D.D.C. 1976). Ifthe utility or plant application which
became the patent to be reissued was filed on or after
November 29, 2000, the reissue applicant will have to
file a petition for an unintentionally delayed priority
claim under 37 CFR 1.78(a)(3) and (a)(6) in addition
to filing a reissue application. See MPEP § 201.11.
The courts have not addressed the question of correction
of the failure to adequately claim priority
under 35 U.S.C. 119(e) in the application (which
became the patent to be reissued) via reissue. If the
application which became the patent to be reissued
was filed prior to November 29,2000, correction as to
priority under 35 U.S.C. 119(e) would be permitted in
a manner somewhat analogous to that of the priority
correction discussed above. Under no circumstances,
however, can a reissue be employed to correct an
applicant's mistake by adding or correcting a priority
claim under 35 U.S.C. 119(e) where the application,
which became the patent to be reissued, was filed on
or after November 29, 2000.
Section 4503 of the American Inventor's Protection
Act of 1999 (AIPA) amended 35 U.S.C. 119(e)(l) to
state that:
No applicationshall be entitled to the benefit of an earlier
filed provisional application under this subsection
unless an amendment containing the specific reference to
the earlierfiled provisional applicationis submitted atsuch
time during the pendency of the application as required by
the Director. The Director may consider the failure to submit
such an amendmentwithin thattime period asa waiver
of any benefit under this subsection. The Director may
establish procedures, including the payment of a surcharge,
to accept. an unintentionally delayed submission of:an
amendment under this section during the pendency of the
application.
35 U.S.c. 119(e)(I), as amended by the AIPA,
clearly prohibits the addition or correction of priority
claims under 35 U.S.C. 119(e) when the application is
no longer pending, e.g., an issued patent. Therefore, a
reissue is not a valid mechanism for adding.or correct-
CORRECTION OF PATENTS
1403
ing a priority claim under 35 U.S.c. 119(e) after a
patent has been granted.
A reissue applicant's failure to timely file a divisional
application is not considered to be error causing
a paten! granted on elected claims to be partially
inoperative by reason of claiming less than the applicant
had a right to claim. Thus, such applicant's error
is not correctable by reissue of the original patent
under 35 U.S.C. 251. In re Orita, 550 F.2d 1277,
1280, 193 USPQ 145, 148 (CCPA 1977). See also In
re Watkinson, 900 F.2d 230, 14 USPQ2d 1407 (Fed.
Cir. 1990); In re Mead, 581 F.2d 257, 198 USPQ 412
(CCPA 1978).
1403 Diligence in Filing
When a reissue application is filed within 2 years
from the date of the original patent, a rejection on the
grounds of lack of diligence or delay in filing the reissue
should not normally be made. Ex parte Lafferty,
190 USPQ 202 (Bd. App. 1975); but see Rohm &
Haas Co. v. Roberts Chemical Inc., 142 F. Supp. 499,
110 USPQ 93 (S.w. Va. 1956), rev'd on other
grounds, 245 F.2d 693, 113 USPQ 423 (4th Cir.
1957).
The fourth paragraph of 35 U.S.c. 251 states:
"No reissued patent shall be granted enlarging the scope
of the claims of the original patent unless applied for
within two yearsfrom the grant of the originalpatent."
Where any broadening reissue application is filed
within two years from the date of the original patent,
35 U.S.C. 251 presumes diligence, and the examiner
should not inquire why applicant failed to file the reissue
application earlier within the two year period.
See MPEP § 1412.03 for broadening reissue practice.
See also In re Graff, 111 F.3rd 874,42 USPQ2d
1471 (Fed. Cir. 1997); In re Bennett, 766 F.2d 524,
528,226 USPQ 413, 416 (Fed. Cir. 1985); In re Fotland,
779 F.2d 31, 228 USPQ 193 (Fed. Cir. 1985).
A reissue filed on the 2-year anniversary date is
considered as filed within 2 years. See Switzer v.
Sockman, 333 F.2d 935,142 USPQ 226 (CCPA 1964)
(a similar rule in interferences).
A reissue application can be granted a filing date
without an oath or declaration, or without the filing
fee being present. See 37 CFR 1.53(0. Applicant will
be given a period of time to provide the missing parts
1400-3 August2001

should also be noted that 37 CFR 1.178(b) requires
reissue applicants to call to the attention of the Office
any prior or concurrent proceedings in which the
patent (for which reissue is requested) is or was
involved, such as interferences, reissues, reexaminations,
or litigation (litigation covers any papers filed
in the court or issued by the court, such as, for example,
motions, pleadings, and court decisions including
court orders) and the results of such proceedings. This
duty to submit such information is a continuing duty,
and runs from the time the reissue application is filed
until the reissue application is abandoned .or issues as
a reissue patent.
It is no longer required that the reissue applicant
should file an offer to surrender the original patent,
see MPEP § 1416; it is only necessary that the patent
be surrendered before the application is allowed.
Where appropriate, the reissue applicant may provide
a claim for priority under 35 U.S.C. 119 or 120,
and may also file an Information Disclosure Statement.
The initial contents of a reissue application are discussed
in detail in MPEP § 1410.01 through § 1418.
CORRECTION OF PATENTS 1410
For expedited processing, new and continuing reissue
application filings under 37 CFR 1.53(b) may be
addressed to "Box REISSUE, Assistant Commissioner
for Patents, Washington, D.C. 20231." Box
REISSUE should only be used for the initial filing of
reissue applications, and should not be used for any
subsequently filed correspondence in reissue applications.
The oath or declaration, any matters ancillary
thereto (such as the Consent of assignee), and the filing
fee may be submitted after the filing date pursuant
to 37 CFR 1.53(f).
The requirement for the assignee to consent to filing
a reissue no longer includes a requirement for
applicant to order a title report with the filing of the
reissue application. Rather, the assignee entity is
established by a statement on behalf of all the assignees
under 37 CFR l.172(a) and 37 CFR 3.73(b). See
MPEP § 1410.01.
Form PTO/SB/50, Reissue Patent Application
Transmittal, may be used for filing reissue applications.
1400-5 August 2001

1410.01 Reissue Applicant, Oath or
Declaration, and Consent of
all Assignees
37 CFR 1.172. Applicants, assignees,
(a) A reissue oath must be signed and sworn to or declara­
tion made by the inventor or inventors except as otherwise provided
(see §§ 1.42, 1.43, 1.47), and must be accompanied by the
written consent of all assignees, if any, owning an undivided interest
in the patent, but a reissue oath may be made and sworn to or
declaration made by the assignee of the entire interest ifthe application
does not seek to enlarge the scope of the claims of the orig­
inal patent. All assignees consenting to the reissue must establish
their ownership interest in the patent by filing in thereissue appli­
cation a submission in accordance with the provisions of§ 3.73(b)
of this chapter.
(b) A reissue will be granted to the original patentee, his
legal representatives or assigns as the interest may appear.
37 CFR 3.73. Establishing right ofassignee to take action.
*****
(b)( I) In order to requestor take action in a patent or trade­
mark matter, the assignee must establish, its ownership of the
patent or trademark property ofparagraph (a) of this section to the
satisfaction of the Commissioner. The establishment of ownership
by the assignee may be combined with the paper that requests or
takes the action. Ownership is, established by submitting to the
Office a signed statement identifying the assignee; .accompanied
by either:
(i) Documentary evidence of, a chain of, title from ,the
original owner to the assignee (e.g., copy of an executed assign­
ment). Thedocuments submittedto establish ownership may be
required to be recorded pursuant to § 3.11 in the assignment
records of the Office as a condition to permitting the assignee to
take action in a matter pending before'the Office; or
(ii) A statement specifying where documentary evi­
dence of a chain of title from the original owner to the assignee is
recorded in the assignment records of the Office (e.g., reel' and
frame number).
(2) The submission 'establishing ownership must show
that the person signing the submission is a person authorized to
act on behalf of.the assignee by:
(i) Including a statement that the person signing the
submission is authorized to act on behalf of the assignee; or
(ii) Being signed by a person having apparent author­
ity to sign on behalf of the assignee, e.g., an officer of the
assignee.
(c) For patent matters only:
(1) Establishment of ownership by the assignee must be
submitted prior to, or at the same time as, the paper requesting or
taking actionis submitted.
CORRECTIONOF PATENTS 1410.01
(2) If the submission under this section isby an assignee
of less than the entire right, title and Interest, such assignee must
indicate the extent (by percentage) of its ownership interest, or the
Office may refuse to accept the submission as an establishment of
ownership.
The reissue oath mustbe signed and sworn to by all
the inventors, or declaration made by all the inventors,
except as otherwise provided in 37 CFR 1.42,
1.43, and 1.47 (see MpEI' § 409). Pursuant to 37 CFR
1.172, where the reissue application does not seek to
enlarge the scope of any of the claims of the original
patent,'the reissue oath may be made and sworn to, or
declaration made, by the assignee of the entire inter"
est. Depending on the circumstances, either Form
PfO/SB/5l, Reissue Application Declaration by the
Inventor, or Form' PfO/SB/52, Reissue'Application
Declaration by the Assignee, may be used to prepare a
declaration in a reissue application. These forms are
reproduced in MPEP § 1414.
CONSENT TO THE REISSUE
Where no assignee exists, applicant should affirmatively
state that fact. If the file record is silent as to the
existence of an assignee, it will be presumed that an
assignee does exist.This presumption should be set
forth by the examinerin the first Office action alerting
applicant to the requirement. It should be noted that
the mere filing .of a written ,assertion of small entity
status in no way relieves applicant of the requirement
to affirmatively state that no assignee exists.
Where a written assertion of small entity status, or
other paper in file indicates that the application/patent
is assigned, and there is no consent by the assignee
named in the written assertion of small entity, the
examiner should make inquiry into the matter in an
Office action, even if the record otherwise indicates
that the application/patent is not assigned.
The reissue oath or declaration must be accompanied
by the written consent of all assignees. 35 U.S.c.
lll(a) and 37 CPR 1.53(b) provide, however, for
according an application a filing date if filed with a
specification, including claim(s), and any required
drawings. Thus, where an application is filed without
an oath or declaration, or without the consent of all
assignees, if the application otherwise complies with
37 CFR 1.53(b) and the reissue rules, the Office of
Initial Patent Examination (OIPE) will accord a filing
date and send out .a notice of missing parts setting a
1400-7 August 2001

For reissue applications filed on or after November
7,2000,37 CFR 1.173(a)(1) requires that the application
specification, including the claims, be furnished
in the form of a copy of the printed patent in double
column format (so that the patent can be simply copied
without cutting), with one page of the patent
appearing on only one side of each individual page of
the specification of the reissue application. It should
be noted that a re-typed specification is not acceptable
in a reissue application; the full copy of the printed
patent must be used. 37 CPR 1.173(a)(2) sets forth the
requirements for the drawings at the time the reissue
application is filed. The application drawings must be
furnished as a clean copy of the printed patent's drawing
sheets. Any changes to the drawings must be
made in accordance with 37 CPR 1.173(b)(3).
Pursuant to 37 CPR 1.173(b), amendments may be
made at the time of filing of a.reissue application. The
amendment may be made either by:
(A) physically incorporating the changes within
the specification by cutting the column of the printed
patent and inserting the added material and rejoining
the remainder of the column; or
(B) providing a preliminary ameudment (a separate
amendment paper) directing that specified
changes be made to the copy of the printed patent.
The presentation of the insertions or deletions as
part of the original reissue specification is an amendment
under 37 CFR 1.173(b).An amendment of the
reissue application made at the time of filing ofthe
reissue application must be made in accordance with
37 CPR 1.173(b)-(e) and (g); see MPEP § 1453. Thus,
as required by 37 CPR 1.173(c), an amendment of the
claims made at the time of filing of a reissue application
must include a separate paper setting forth the
status of all claims (i.e., pending or canceled), and an
explanation of the support in the disclosure of the
patent for the changes made to the claims.
If a chart, table, or chemical formula is amended
and it spans two columns of the patent, it should not
be split. Rather, the chart, table, or chemical formula
should be provided in its entirety as part of the column
ofthe patent to which it pertains, in order to provide
a continuity of the description. When doing so,
the chart, table, or chemical formula may exteud
beyond the width of the column. Change in only a part
CORRECTION OF PATENTS 1411.01
of a word or chemical formula is not permitted. Entire
words or chemical formulas must be shown as being
changed. Deletion of a chemical formula should be
shown by brackets which are substantially larger and
darker than any in the formula.
Twice reissued patent:
Examples of the form for a twice-reissued patent
are found in Re. 23,558 and Re. 28,488. Double
underlining and double bracketing are used in the second
reissue application, while bold-faced type and
double bracketing appear in the printed patent (the
second reissue patent) to indicate further insertions
and deletions, respectively, in the second reissue
patent.
When a copy of a first reissue patent is used as the
specification of a second reissue application (filed as
a reissue of a reissue), additions made by the first reissue
will already be printed in italics, and should
remain in such format. Thus, applicants need only
present additions to the specification/claims in the
second reissue application as double underlined text.
Subject matter to be deleted from the first reissue
patent should be presented in the second reissue application
within sets of double brackets.
1411.01 Certificate of Correction or
Disclaimer in Original Patent
The applicant should include any changes, additions,
or deletions that were made by a Certificate of
Correction to the original patent grant in the reissue
application without underlining or bracketing. The
examiner should also make certain that all Certificate
of Correction changes in the patent have been properly
incorporated into the reissue application.
Certificate of Correction changes and disclaimer of
claim(s) under 37 CPR 1.32l(a) should be made withoutusing
underlining or brackets. Since these are part
of the original patent and were made before the reissue
was filed, they should show up in the printed reissue
document as part of the original patent, i.e., not in
italics or bracketed. If the changes are extensive and!
or applicant has submitted them improperly with
underlining and brackets, a clean copy of the specification
with the Certificate of Correction changes in it
may be requested by the examiner.
1400-11 August2001

1412.03 MANUAL OF PATENT EXAMlNING PROCEDURE
ing aspect is present in the reissue which was not present in: the
application for patent. The record of the application for the patent
shows that the broadening aspect (in the reissue) relates to subject
matter that applicantpreviously surrendered during .the' prosecution
of the application. Accordingly, the narrow scope' -of the
claims itt the patent was not an .error 'within .the meaning 'of -35
U;S.C.,:251, and the broader scope surrendered in the.application
for the patent .cannct be recaptured by the filing of the, present
reissue application.
[21
Examiner Note:
In bracket 2, the examiner should explain the specifics of why
recapture exists, including an identification of the omittedlbroadened
claim limitations in the reissue which providethe "broadeningaspect"
to the claim(s), and where in the original application
the narrowed claim scope was presented/argued to obviate a rejection/objection.
See MPEP § 1412.02.
1412.03 Broadening Reissue Claims
35 U.S.C-251 prescribes a 2-year limit for filing
applications for broadening reissues:
No reissue patent shall be granted enlarging the scope of
the original patentunless appliedfor within two years
from the grant.of the original patent.
MEANING OF "BROADENED REISSUE
CLAIM"
A broadened reissue claim is a claim which
enlarges the scope of the claims of the patent, i.e., a
claim which is greater in scope than each and every
claim of the original patent. If a disclaimer is filed in
the patent prior to the filing of a reissue application,
the disclaimed cJaimsare !!Q.t part of the "original
patent" nnder 35 U.S.c. 251. The Court in Vectra Fitness
Inc. v. TNWK Corp., 49 USf>Q2d 1144, 1147,
162 F.3d 1379, 1383 (Fed. Cir. 1998) held that a reissue
application violated the statutory prohibition
under 35 U.S.C. 251 against broadening the scope of
the patent more than2 years after its grant because the
reissue claims are broader than the claims that remain
after the disclaimer, even though the reissue claims
are narrower than the claims that were disclaimed by
the patentee before reissue. The reissue application
was bounded by the claims remaining in the patent
after a disclaimer is filed.
A claim of a reissue application enlarges the scope
of the claims of the patent if it is broader in at least
August2001 1400-16
one respect, even thongh it may be narrower in other
respects.
A claim inthe reissue which includes subject matter
not covered by the patent claims enlarges the scope
of the patent claims. For example, if any amended or
newly added claim in the reissue contains within its
scope any conceivable product or process which
would not have infringed the patent, then that reissue
claim would be broader than the patent claims. Tillotson,
Ltd. v. Walbro Corp., 831 F.2d 1033, 1037 n.2, 4
USPQ2d 1450, 1453 n.2 (Fed. Cir. 1987); In re Ruth,
278 F.2d 729, 730,126 USPQ 155, 156 (CCPA 1960);
In re Rogoff, 261 F.2d 601, 603, 120 USPQ 185, 186
(CCf>A 1958). A claim which reads on something
which the original claims do not is a broadened claim.
A claim would be considered a broadening claim if
the patent owner would be able to sue any party for
infringement who previously could not have been
sued for infringement. Thus, where the original patent
claims only the process, and the reissue application
adds (for the first time) product claims, the scope of
the claims has been broadened since a party could not
be sued-for infringement of the product based on the
claims of the original patent.
The addition of combination claims in a reissue
application where only subcombination claims were
present in the original patent could be a broadening of
the invention. The question which must be resolved in
this case is whether the combination claims added in
the reissue would be for "the invention as claimed" in
the original patent. See Ex parte Wikdahl, 10 USPQ2d
at 1549. The newly added combination claims should
be analyzed to determine whether they contain every
limitation Of the subcombination of any claim of the
original patent. If the combination claims (added in
the reissue) contain every limitation of the subcombination
(which was claimed in the original application),
then infringement of the combination must also
resnlt in infringement of the subcombination. Accordingly,
the patent owner could not, if a reissue patent
issues with the combination claims, sue any new party
for infringement who could. not have been sued for
infringement ofthe original patent. Therefore, broadening
does not exist, in spite of the addition of the
combination.

BROADENING-INDIRECT INFRINGEMENT
35 U.S.c. 27I(g). Infringement a/patent
*****
(g) Whoever without authority imports into the United
States or offers to sell, sells, or uses within the United States a
product which is made by a process patented in the United States
shall be liable as an infringer, ifthe importation, offer to sell, sale,
or use of the product occurs during the term of such process
patent. In an action for infringement of a process patent, no rem':'
edy may be granted for infringement on account of the noncommercial
use or retail sale of a product unless there is no adequate
remedy under this title for infringement on account of the importation
or other use, offer to sell, or sale of that product. A product
which is made by a patented process will, for purposes ofthis title,
not be considered to be so made after -
(1) it is materially changed by subsequent processes; or
(2) it becomes a trivial and nonessential component of
another product.
*****
An unusual type of broadening mayarise where the
patent owner adds, in the reissue, a limitation to the
original patent claims which were drawn to a process
of making an intermediate, so as to now claim in the
reissue application a process of making a final product.
In Eli Lilly and Co. v. American Cyanamid Co.,
82 F.3d 1568, 1577,38 USPQ2d 1705, 1712 (Fed. Cir.
1996), the court noted that a patent holder having
claims to preparing an intermediate compound is
unable to successfully pursue an accused infringer
who is importing for sale the final product, where the
accused infringer has "materially changed" the intermediate
by converting it into the final product. Thus,
where a patent claims a method of making new intermediate
product ABC, the patent owner will not be
able to prevent a competitor from importing the final
product ABCD for the purpose of selling it in the
United States. If, however, the patent claims could be
modified by reissue to include a claim to preparing
the final product ABCD, then the patent owner would,
in fact, be able to prevent a'competitor from importing
the final product ABCD because that importation
would (indirectly) infringe the patent under 35 U.S.C.
271(g). The amendment of the patent claims in the
reissue application to include a final step of converting
the intermediate ABC to the final product ABCD
would enable the patent owner to invoke the protection
of 35 U.S.C. 271(g), thereby increasing the scope
of protection of the patent claims so that a new set of
infringers would be created.
CORRECTION OF PATENTS 1412.03
As pointed out above, a reissue claim is broadened
if it contains within its scope any conceivable invention
which would not have infringed the patent, but
will now. infringe the reissue claim. Thus, when the
new reissue claims drawn to producing the final product
ABCD are subjected to the test for broadening, as
set forth by the Court of Appeals for the Federal Circuit
in Tillotson, Ltd. v. Walbro Corp., 831 F.2d 1033,
1037 n.2, 4 USPQ2d 1450, 1453 n.2 (1987)(citing In
re Self, 671 F.2d 1344, 213 USPQ 1 (CCPA 1982); In
re Ruth, 287 F.2d 729, 126 USPQ 155 (CCPA 1960)),
they indeed provide the patent owner with expanded
protection. If the reissue is granted, the patent owner
would be able to exclude an infringer whom the
patent owner was unable to exclude heretofore by
relying on the claims in the original patent.
The inclusion of an additional step in a chemical
process claim would generally appear to narrow the
scope of that claim. A process claim having more
steps is usually considered to be narrower than one
reciting fewer steps. Accordingly, the addition of a
process step to convert intermediate ABC into the
final product ABCD might initially appear to be
solely a narrowing of the claims. Through the provisions
of 35U.S.C. 271(g), however, what appears to
be solely a narrowing limitation in actuality also provides
an element ofbroadening to the claim because it
provides an additional element of protection for the
patent owner which did not exist prior to the insertion
of the limitation.
In a chemical case where process claims are
present, the examiner should be careful to check the
claims for the presence of this unique type of broadening.
SCOPE OF DEPENDENT CLAIM ENLARGED­
NOT BROADENING
As pointed out above, a claim will be considered a
broadened reissue claim when it is greater in scope
than each and every claim of the patent to be reissued.
A corollary of this is that a claim which has
been broadened in a reissue as compared to its scope
in the patent is not a broadened reissue claim if it is
narrower than, or equal in scope to, any other claim
which appears in the patent. A cornmon example of
this is where dependent claim 2 is broadened via the
reissue (other than the addition of a process step to
convert an intermediate to a final product as discussed
1400-17 August 2001

1412.03 MANUAL OF PATENT EXAMINING PROCEDURE
in the preceding subsection), but independent claim 1
on which it is based is not broadened. Since a dependent
claim is construed to contain all the limitations of
the claim upon which it depends, claim 2 must be at
least as narrow as claim 1 and is thus not a broadened
reissue claim.
NEW CATEGORY OF INVENTION ADDED IN
REISSUE - BROADENING
The addition of process claims as a new category of
invention to be claimed in the patent (i.e., where there
were no method claims present in the original patent)
is generally considered as being a broadening of the
invention. See Ex parte Wikdahl, 10 USPQ2d 1546
(Bd. Pat. App. & Inter. 1989).
WHEN A BROADENED CLAIM CAN BE PRE­
SENTED
A broadened claim can be presented within two
years from the grant of the original patent in a reissue
application. In addition, a broadened claim can be
presented after two years from the grant of the original
patent in. a broadening reissue which was filed
within two years from the grant. Where any intent to
broaden is indicated in the reissue application within
the two years from the patent grant, a broadened claim
can subsequently be presented in the reissue after the
two year period Finally, if intent to broaden is indicated
in a parent reissue application within the two
years, -a broadened claim can be presented in a continuing
reissue application after the two year period.
In any other situation, a broadened claim cannot be
presented, and the examiner should check carefully
for the improper presentation of broadened claims.
A reissue application filed on the 2-year anniversary
date from the patent grant is considered to be
filed within 2 years of the patent grant. See Switzer v.
Sackman, 333 F.2d 935,142 USPQ 226 {CCPA 1964)
for a similar rule in interferences.
See also the following cases which pertain to
broadened reissues:
In re Graff; 111 F.3d 874, 877, 42 USPQ2d 1471,
1473-74 (Fed. Cir. 1997) (Broadened claims in a continuing
reissue application were properly rejected
under 35 U.S.C. 251 because the proposal for broadened
claims was not made (in the parent reissue application)
within two years from the grantof the original
August 2001
1400-18
patent and the public was not notified that broadened
claims were being sought until after the two-year
period elapsed.);
In re Fotland, 779 F.2d 31, 228 USPQ 193 (Fed.
Cir. 1985), cert. denied, 476 U.S. 1183 (1986) (The
failure by an applicant to include an oath or declaration
indicating a desire to seek broadened claims
within two years of the patent grant will bar a subsequent
attempt to broaden the claims after the two year
limit. Under the former version of 37 CFR 1.175 (the
former 37 CFR 1.175(a)(4)), applicant timely sought
a "no-defect" reissue, but the Court did not permit an
attempt made beyond the two year limit to convert the
reissue into a broadening reissue. In this case, applicant
did not indicate any intent to broaden within the
two years.);
In re Bennett, 766 F.2d 524, 528, 226 USPQ 413,
416 (Fed. Cir. 1985) (en bane) (A reissue application
with broadened claims was filed within two years of
the patent grant; however, the declaration was executed
by the assignee rather than the inventor. The
Federal Circuit permitted correction of the improperly
executed declaration to be made more than two years
after the patent grant.);
In re Doll, 419 F.2d 925, 928, 164 USPQ 218, 220
(CCPA 1970) (If the reissue application is timely filed
within two years of the original patent grant and the
applicant indicates in the oath or declaration that the
claims will be broadened, then applicant may subsequently
broaden the claims in the pending reissue
prosecution even if the additional broadening occurs
beyond the two year limit.).
Form paragraphs 14.12 and 14.13 may be used in
rejections based on improper broadened reissue
claims.
'II 14.12 Rejection, 35 U.S.c. 251, Broadened ClaimsAfter
Two Years
Claim [II rejected under 35 U.S.C. 251 as being broadened in
a reissue application filed outside. the .two year statutory period.
[2] A claimis broader in scope than the original claims if it contains
within its scope any conceivable product or process which
would not have infringed the original patent. A claim is broadened
if it is broader in any oneres'pect even though it may be narrower
in other respects.
Examiner Note:
The claim limitations that broaden the scope should be identified
and explained in bracket 2. See MPEP §§ 706.03(x) and
1412.03.

'If 14.13 Rejection, 35 U.S.c. 251, Broadened Claims Filed
by Assignee
Claim [1] rejectedunder 35 U.S.C. 251 as being improperly
broadened in a reissue application made and sworn to by the
assignee and not the patentee. [2]A claim is broader in scope than
the original claims if it contains within its scope any conceivable
product or process which would not have infringed the original
patent. A claim.is broadened if it is broader in .anY one respect
even though it may be narrower in other respects.
Examiner Note:
'The claim limitations that broaden the scope should be identified
and explained in bracket 2. See MPEP §§ 706.03(x) and
1412.03.
BROADENING REISSUE - OATHIDECLARA­
TION REQUIREMENTS
A broadening reissue application mnst be applied
for by all of the inventors (patentees), that is, the original
reissue oath or declaration mnst be signed by all
of the inventors. See also MPEP § 1414. If a supplemental
oath or declaration in a broadening reissue
application is needed in the application in order to fulfill
the requirements of 37 CPR 1.175, the supplemental
reissue oath or declaration must be signed by all of
the inventors. See In re Hayes, 53 USPQ2d 1222
(Cornm'r Pat. 1999) and MPEP § 1414.01.
1412.04 Correction of Inventorship
The correction of misjoinder of inventors has been
held to be a ground for reissue. See Ex parte Scudder,
169 USPQ 814, 815 (Bd. App. 1971) wherein the
Board held that 35 U.S.C. 251 authorizes reissue
applications to correct misjoinder of inventors where
35 U.S.c. 256 is inadequate. See alsoA.F. Stoddard &
Co. v. Donn, 564 F.2d 556, 567 n.16, 195 USPQ 97,
106 n.16 (D.C. Cir. 1977) wherein correction of
inventorship from sole inventor A to sole inventor B
was permitted in a reissue application. The court
noted that reissue by itself is a vehicle for correcting
inventorship in a patent.
CERTIFICATE OF CORRECTION AS A VEHI­
CLEFOR CORRECTING INVENTORSIIIP
While reissue is a vehicle for correcting inventorship
in a patent, correction of inventorship should be
effected under the provisions of 35 U.S.C. 256 and
37 CFR 1.324 by filing a request for a Certificate of
Correction if:
CORRECTION OF PATENTS
1412,04
(A) the only change being made in the patent is to
correct the inventorship: and
(B) all parties are in agreement and the inventorship
issue is not contested.
See MPEP § 1481 for the procedure to be followed
to obtain a Certificate of Correction for correction of
inventorship.
REISSUE AS A VEHICLE FOR CORRECTING
INVENTORSIIIP
Where the provisions of 35 U.S.c. 256 and
37 CFR 1.324 do not apply, a reissue application is
the appropriate vehicle to correct inventorship. The
failure to name the correct inventive entity is an error
in the patentwhich is correctable under 35 U.S.C.
251. The reissue oath or declaration pursuant to
37CFR 1.175 must state that the applicant believes'
the original. patent. to be wholly or partly inoperative
or invalid through error of a person being incorrectly
named in an issued patent as the inventor, or through
error ofan inventor incorrectly not named in an issued
patent, and that such error arose without any deceptive
intention on the part of the applicant. The reissue
oath or declaration must, as stated in 37 CPR 1.175,
also comply with 37 CPR 1.63.
The correction of inventorship does not enlarge the
scope of the patent claims. Where a reissue application
does not seek to enlarge the scope of the claims of
the original patent, the reissue oath may bemade and
sworn to, or the declaration made, by the assignee of
the entire interest under 37 CPR 1.172. An assignee of
part interest may not file a reissue application to correct
inventorship where the other co-owner did not
join in the reissue application and has not consented
to the reissue proceeding. See Baker Hughes Inc. v.
Kirk, 921 F. Supp. 801, 809, 38 USPQ2d 1885,
(D.D.C. 1995). See 35 U.S.C. 251, third paragraph.
Thus, the signatures of the inventors are not needed
on the reissue oath or declaration where the assignee
of the entire interest signs the reissue oath/declaration.
Accordingly, an assignee of the entire interest can add
or delete an inventor by reissue (e.g., correct inventor"
ship from inventor A to inventors A and B) without
the original inventor's consent. See also 37 CFR
3.71(a) ("One or more assignees as defined in paragraph
(b) of this section may, after becoming of
record pursuant to paragraph (c) of this section, conduct
prosecution of a national patent application or
1400-19 August 2001

1413 MANUAL OFPATENTEXAMINING PROCEDURE
reexamination proceeding to the exclusion of either
the inventive entity, or the assignee(s) previously entitled
to conduct prosecution." Emphasis added). Thus,
the assignee of the entire interest can file a reissue to
change the inventorship to one which the assignee
believes to be correct, even though an inventor might
disagree. The protection of the assignee's property
rights in the application and patent are statutorily
based in 35 V.S.C. 118.
Where a reissue to correct inventorship also
changes the claims to enlarge the scope of the patent
claims, the signature of all the inventors is needed.
However, if an inventor refuses to sign the reissue
oath or declaration because he. or she believes the
change in inventorship (to be effected) is not correct,
the reissue application can still be filed with a petition
under 37 CFR 1.47 without that inventor's signature.
It is the assignee who controls correction of inventorship.
The reissue application with its reissue oath or declaration
under 37 CPR 1.175 provides a complete
mechanism to correct inventorship. See A.R Stoddard
& Co. v. Dann, 564 F.2d at 567,195 VSPQ lit 106. A
request under 37 CFR 1.48 or a petition under 37 CFR
1.324 cannot be used to correct the inventorship of a
reissue application. If a request under 37 CFR 1.48 or
a petition under 37 CPR 1.324 is filed in a reissue
application, the request or petition should be dismissed
and the processing or petition fee refunded.
The material submitted with the request or petition
should then be considered to determine if it complies
with 37 CPR 1.175.Ifthe material submitted with the
request or petition does comply with the requirements
of 37 CPR 1.175 (and the reissue application is otherwise
in order), the correction of inventorship will be
permitted as .a correction of an error in the patent
under 35 V.S.c. 251.
Where a reissue application seeks to correct inventorship
in the patent and the inventors sign the reissue
oath or declaration (rather than an assignee of the
entire interest under 37CFR 1.172), the correct inventive
entity must sign the reissue oath or.declaration.
Where an inventor is being added in a reissue application
to correct inventorship in a patent, the inventor
being added must sign the reissue oath or declaration
together with the inventors previously designated on
the patent. For example, a reissue application is filed
August2001
;/
1400-20
to correct the inventorship from inventors A and B
(listed as inventors on the patent) to inventors A, B,
and C. Inventor C is the inventor being added. In such
a case, A, B, and C are the correct inventors, and
accordingly, each of A, B, and C must sign the reissue
oath or declaration. Where an inventor is being
deleted in a reissue application to correctinventorship
in a patent, the inventor being deleted need not sign
the reissue oath or declaration. The reissue oath or
declaration must be signed by the correct inventive
entity. For example, a reissue application is filed to
correct inventorship from inventors A, B, and C
(listed as inventors on the patent) to inventors A and
B. Inventor C is being deleted as a named inventor. In
such a case, A and B are the correct inventors, and
accordingly, inventors A and B must sign the reissue
oath or declaration but inventorC need not sign the
reissue oath or declaration.
1413 Drawings
37 CFR 1.173. Reissue specification, drawings, and
amendments.
*****
(2) Drawings. Applicant mustsubmit a cleancopy of each
drawing sheetof theprinted patentat thetime thereissueapplication
is filed. If suchG?PY complies with § 1.84, no further drawings
will be required. Where a'drawing of thereissue application
is to include any changes relative tothe patent being reissued, the
changes to the drawing must be made in accordance' with paragraph
(b)(3) of this section. The Office will not transfer the drawingsfrom
the patent file to the reissue application.
*****
A clean copy (e.g., good quality photocopies free of
any extraneous markings) of each drawing sheet of
the printed patent must be.supplied by the applicant at
the time of filing of the reissue application. If the copies
meet the requirements of 37CFR 1.84, no further
formal drawings will be required. New drawing sheets
are not to be submitted, unless some change is made
in the originalpatent drawings. Such changes must be
made in accordance with 37 CFR 1.173(b)(3).
The prior reissue practice of transferring drawings
from the patent file has been eliminated, since clean
photocopies of the printed patent drawings are acceptable
for use in the printing of the reissue patent.

AMENDMENT OF DRAWINGS
37 CFR 1.173. Reissue specification, drawings, and
amendments.
*****
(3) Drawings. Any change to the patent drawings must be
submitted as a sketch on a separate paper showing the proposed
changes in redfor approval by the examiner. Upon approval by
the examiner, new drawings in compliance with § 1.84 including
the approved changes must be filed. Amended figures must be
identified as "Amended," and any added figure mustbe identified
as "New." In the event that a figure is canceled, the figure must be
surrounded by brackets and identified as "Canceled."
*****
The provisions of 37 CFR 1.173(b)(3) govern the
manner of making amendments (changes) to the
drawings in a reissue application. The following guidance
is provided as to the procedure for amending
drawings:
(A) Amending the original or printed patent drawing
sheets by physically changing or altering them is
not permitted. Any reqnest to do so should be denied.
(B) Where a change to the drawings is desired, a
request for the drawing change must be filed as a separate
paper in the application. The request must
include a sketch in permanent ink showing proposed
changes in red and must include a request for
approval of the changes by the examiner. The examiner
should inspect the sketch for the presence of new
matter, for conformance with the specification as to
structure and numbering, and for anything else that
could result in the refusal of the request for the drawing
change.
(C) Where the drawing change request is
approved, the examiner will require a formal copy of
the drawing sheet(s) having the change(s). Each new
drawing sheet must identify any changed figure as
"amended" and any added figure as "new." If a drawing
figure is to be deleted in toto, it must be enclosed
in brackets and identified as "canceled." If any new
drawing sheet does not comply with these requirements
that drawing sheet will not be entered.
(D) For each proper new drawing sheet being
added, the new sheet should be inserted after the
existing drawing sheets. For each proper new drawing
sheet which replaces an existing drawing sheet, the
existing sheet should be canceled by placing the sheet
face down in the file and placing a large "X" on the
CORRECTION OF PATENTS 1414
back of the sheet. The new sheet should be inserted in
place of the turned over existing sheet.
(E) If any drawing change request is not approved
or if any submitted sheet of formal drawings is not
entered, the examiner will so inform the reissue applicant
in the next Office action, and the examiner will
set forth the reasons for same.
1414 Content of Reissue OathlDeclaration
37 CFR 1.175. Reissue oath or declaration.
(a) The reissue oath or declaration in addition to complying
with the requirements of § 1.63, must also statethat:
(1) The applicant believes the original patent to be wholly
or partly inoperative or invalid by reason of a defective specification
or drawing, or by reason of the patentee claiming more or less
than the patentee had the right to claim in the patent, stating at
least one error being relied upon as the basis for reissue; and
(2) All errors being corrected in the reissue application up
to the time of filing of the oath or declaration under this paragraph
arose without any deceptive intention on the part of the applicant.
(b)(I) For any error corrected, which is not covered by the
oath or declaration submitted under paragraph (a) of this section,
applicant must submit a supplemental oath or declaration statingthat
every such error arose without any deceptive intention on the
part of the applicant. Any supplemental oath or declaration
required by this paragraph must be submitted before allowance
and may be submitted:
(i) With any amendment prior to allowance; or
(ii) In order to overcome a rejection under 35 V.S.c.
251 made by the examiner where it is indicated that the submission
of a supplemental oath or declaration as required by this paragraph
will overcome the rejection.
(2) For any error sought to be corrected after allowance, a
supplemental oath or declaration must accompany the' requested
correction stating that the error(s) to be corrected arose without
any deceptive intention on the part of the applicant.
(c) Having once stated an error upon which the reissue is
based, as set forth in paragraph (a)(I), unless all errors previously
stated in the oath or declaration are no longer being corrected, a
subsequent oath or declaration under paragraph (b) of this section
need not specifically identify any other error or errors being corrected.
(d) The oath or declaration required by paragraph (a) of this
section may be submitted under the provisions of § 1.53(f).
The reissue oath/declaration is an essential part of a
reissue application and must be filed with the application,
or within the time period set under 37 CFR
1.53(f) along with the required surcharge as set forth
in 37 CPR 1.16(e) in order to avoid abandonment.
The question of the sufficiency of the reissue oath!
declaration filed under 37 CPR 1.175 must in each
1400-21 August2001

1414 MANUAL OF PATENT EXAMlNlNG PROCEDURE
case be reviewed and decided personally by the primary
examiner.
Reissne oaths or declarations mnst contain the following:
(A) A statement that the applicant believes the
original patent to be wholly or partly inoperative or
invalid-
(I) by reason ofa defective specification or
drawing, or
(2) by reason of the patentee claiming more or
less than patentee had the right to claim in the patent;
(B) A statement of at least one error which is
relied upon to snpport the reissue application,i.e., as
the basis for the reissne;
(C) A statement that all errors which are being
corrected in the reissne application np to the time of
filing of the oath/declaration arose without any deceptive
intention on the part of the applicant; and
(D) The information required by 37 CFR 1.63.
These elements will now be discussed:
I. A..8TATEMENT THAT THE APPLICANT
BELIEVES THE ORIGINAL PATENT TO
BE WHOLLYOR PARTLY INOPERATIVE
OR INVALID BY REASON OFA DEFEC­
TIVE SPECIFICATION OR DRAWING,
OR BY REASON OF THE PATENTEE
CLAIMING MORE OR LESS THAN PAT­
ENTEE HAD THE RIGHT TO CLAIM IN
THE PATENT.
In order to satisfy this requirement, a declaration
can state:
"Applicant believestheoriginal patentto be partly inoperative
or invalid by reason of a defective specification or
drawing."
Alternatively, a declaration can state:
"Applicant believestheoriginal patent to be partly inoperative
orinvalidby reason of thepatenteeclaimingmore' Or
less than patentee hadthe rightto claim in the patent"
Where the specification or drawing is defective and
patentee claimed more or less than patentee had the
right to claim in the patent, then both statements
should be included in the reissue oath/declaration.
See MPEP § 1412,04 for an exemplary declaration
statementwhen the error being corrected is an error in
inventorship.
August 2001 1400 c22
The above examples will besufficient to satisfy this
requirement without any further statement.
Form paragraph 14.01 may be nsed where the reissue
oath/declaration does not provide the required
statement as to applicant's belief that the original
patent is wholly or partly inoperative or invalid.
'Jl 14.01 Defective Reissue Oath/Declaration, 37 CFR
1.175(a)(1) - No Statement ofDefect in the Patent
The .reissue-oarh/declaration filed With- this application is
defective,because it fails to.contain the statement required under
37 CPR L175(a)(I) as to applicant's belief that the original patent
is wholly or partly inoperative or invalid. See 37 CPR L175(a)(l)
and see MPEP § 1414. [II
Examiner Note:
1. Use this form paragraph when applicant: (a) fails to allege
thatthe originalpatent is inoperative orinvalidand/or (b) fails to
statethe reason of a defective specification ordrawing,or of patentee
claiming moreor less than patenteehadthe right-to claim in
the patent. In bracket 1, point out the specific defect to applicant
by using thelanguage of (a) and/or (b), as it is appropriate.
2 Form paragraph 14.14 must follow this form paragraph.
II. A STATEMENT OF AT LEAST ONE ER­
ROR WmCH IS RELIED UPON TO SUP­
PORT THE REISSUE APPLICATION (I.E.,
THE BASIS FOR THE REISSUE).
A reissue applicant must acknowledge the existenceof
an error in the specification, drawings, or
claims, which error causes the original patent to be
defective. In re Wilder, 736 F.2d1516, 222 USPQ 369
(Fed. Cir. 1984). A change or departure from the original
specification or claims represents an "error" in
the original patent under 35 U.S.C. 251. See MPEP §
1402 for a discussion of grounds for filing a reissue
that may constitute the "error" required by 35 U.S.c.
25kNot all changes with respect to the patent constitute
the "error" required by 35 U.S.C. 251.
Applicant need only specify in the reissue oath/declaration
one of the errors upon which reissue is based.
Where applicant specifies one such error, this requirement
of a reissue oath/declaration is satisfied. Applicant
may specify more than one error.
Where more than one error is specified in the oath/
declaration and some of the designated "errors" are
found to not be "errors" under 35 U.S.C. 251, any
remaining error which is an error under 35 U.S.c. 251
will still support the reissue.
The "at least one error" which is relied upon to sup"
port the reissue application. must be set forth in the

oath/declaration. It is not necessary, however, to point
out how (or when) the error arose or occnrred. Further,
it is not necessary to point out how (or when) the
error was discovered. If an applicant chooses to point
out these matters, the statements directed to these
matters will not be reviewed by the examiner, and the
applicant should be so informed in the next Office
action. All that is needed for the oath/declaration
statement as to error is the identification of "at least
one error" relied npon.
In identifying the error, it is snfficient that the reissue
oath/declaration identify a single word, phrase, or
expression in the specification or in an original claim,
and how it renders the original patent wholly or partly
inoperative or invalid. The corresponding corrective
action which has been taken to correct the original
patent need not be identified in the oath/declaration. If
the initial reissue oath/declaration "states at least one
error" in the original patent, and, in addition, recites
the specific corrective action taken in the reissue
application, the oath/declaration would be considered
acceptable, even though the corrective action statement
is not required.
It is not sufficient for an oath/declaration to merely
state "this application is being filed to correct errors in
the patent which may be noted from the changes made
in the disclosure." Rather, the oath/declaration must
specifically identify an error. In addition, it is not sufficient
to merely reproduce the claims with brackets
and underlining and state that such will identify the
error. See In re Constant, 827 F.2d 728, 729, 3
USPQ2d 1479 (Fed. Cir.), cert. denied, 484 U.S. 894
(1987). Any error in the claims must be identified by
reference to the specific c1aim(s) and the specific
claim language wherein lies the error.
Form paragraph 14.01.01 may be used where the
reissue oath/declaration does not identify an error.
'f[ /4.01.01 Defective Reissue OathlDeclaration, 37 CFR
1.175(a)(1) - No Statement ofa Specific Error
The reissue oath/declaration filed with this application is
defective because it fails to identify at least one error which is
relied upon to support the reissue application. See 37 CFR
1.175(a)(I) and MPEP § 1414.
Examiner Note:
1. Use this formparagraph when the reissue oathor declaration
does not containany statement of an error which is relied uponto
support thereissueapplication.
2. This form paragraph can be used where the reissue oath or
declaration does not even mention error. It can also can be used
CORRECTION OF PATENTS 1414
wherethe reissue oath or declaration contains some discussion of
the concept of error butneverin factidentifies a specific error to
be reliedupon. Forexample, it is not sufficient for anoathordeclaration
to merely state "this application is being filed to correct
errors in the patent which maybe notedfromthechanges made in
the.disclosure,"
3. Form paragraph 14.14 mnst follow this form paragraph.
Where the reissue oath/declaration does identify an
error or errors, the oath/declaration must be checked
carefully to ensure that at least one of the errors identified
is indeed an "error" which will support the filing
of a reissue, i.e., an "error" that will provide
grounds for reissue of the patent. See MPEP § 1402.
If the error identified in the oath/declaration is not an
appropriate error upon which a reissue can be based,
then the oath/declaration must be indicated to be
defective in the examiner's Office action.
Form paragraphs 14.01.02 and 14.01.03 may be
used where the reissue oath/declaration fails to provide
at least one error upon which a reissue can be
based.
'f[ 14.01,02 Defective Reissue Oath/Declaration, 37 CFR
1.175(a)(l}-The Identified "Error" 1s Not Appropriate
Error
The reissue oath/declaration filed with this .application is
defective because the error which is relied upon to support the
reissue application is not an error upon. which a reissue can be
based. See 37 CFR 1.175(a)(I) and MPEP§ 1414.
Examiner Note:
1. Use this form paragraph when the reissue oath/declaration
identifies only one error which is relied uponto support thereissue
application, andthat one error is notan appropriate error upon
whicha reissue canbe based.
2. Form paragraph 14.14 mnst follow this form paragraph.
'f[ 14.01.03 Defective Reissue Oath/Declaration, 37 CFR
1.175(a)(I) - Multiple identified "Errors" Not Appropriate
Errors
The reissue oath/declaration filed with this application is
defectivebecause none of theerrors whichare relieduponto support
thereissue application are errors uponWhich a reissue canbe
based. See 37CFR 1.175(a)(1) and MPEP § 1414.
Examiner Note:
1. Use this form paragraph when the reissue oath/declaration
identifies more than one error relied upon to support the reissue
application, and none of the errors are appropriate errors upon
whicha reissue canbe based.
2. Note that if the reissueoath/declaration identifies morethan
one error relied upon, and at least one of the errors is an error
upon which reissue can be based, this form paragraph should not
be used, despite the additional reliance by applicant on "errors"
1400-23 August 2001

1415 MANUAL OF PATENT EXAMINING PROCEDURE
provided it is accompanied by a petition under 37
CFR 1.183 along with the petition fee, requesting
waiver of the signature requirement of the nonsigning
inventor.
Form PTO/SB/5IS, Supplemental Declaration For
Reissue Patent Application To Correct "Errors" Statement
(37 CPR 1.175), may be used to prepare a supplemental
reissue declaration.
1415 Reissue Filing and Issue Fees
The reissue applicant is permitted to present every
claim that was issued in the original patent for the
basic filing fee. In addition to the basic filing fee, the
August 2001 1400-30
filing or later presentation of each independent claim
which is in excess of the number of independent
claims in the original patent requires a fee. In addition,
the filing or later presentation of each claim
(whether independent or dependent) in excess of 20,
and also in excess of the number of claims in the original
patent, requires a fee. Fees for claims in reissue
continued prosecution applications are calculated in
the same manner as outlined above. The Office has
prepared Form PTO/SB/56, Reissue Application Fee
Transmittal Form, which is designed to assist in the
correct calculation of reissue filing fees.

1415.01 Maintenance Fees on
the OriginalPatellt
The filing of a reissue application does not alter the
schedule of payments of maintenance fees on the
original patent. If maintenance fees have not been
paid on the original patent as required by 35 U.S.C.
41(b) and 37 CFR 1.20, and the patent has expired, no
reissue patent can be granted. 35 U.S.C. 251, first
paragraph, only authorizes the granting of a reissue
patent for the unexpired term of the original patent.
Once a patent has expired, the Commissioner no
longer has the authority under 35 U.S.c. 251 to reissue
the patent. See In re Morgan, 990 F.2d 1230,
26 USPQ2d 1392 (Fed. Cir. 1993).
The examiner should determine whether all
required maintenance fees have been paid prior to
conducting an examination of a reissue application. In
addition, during the process of preparing the reissue
application for issue, the examiner should again determine
whether all required maintenance fees have been
paid up to date.
PALM may be used to determine the history of
maintenance fees by entering 2970 and then the patent
number. This PALM screen shows when any maintenance
fees have been paid and when the next maintenance
fee is due to be paid.
If the window for the maintenance fee due has
closed (maintenance fees are due by the day of the
4th, 8th and 12th year anniversary of the grant of the
patent), but the maintenance fee has not been paid,
then the reissue should be rejected under 35 U.S.C.
251 as having expired and may not be passed to issue.
However, if time remains for applicant to pay the
maintenance fee, then the application should not be
rejected under 35 U.S.C. 251 and it may be passed to
issue when it is in condition for allowance, because
the patent has not expired.
See MPEP Chapter 2500 for additional information
pertaining to maintenance fees.
1416 Offer to Surrender and
Return Original Patent
37 CFR I. 178. Original patent; continuing duty of
applicant.
(a) The application for a reissue should be accompanied by
either an offer to surrender the original patent, or the original
patent itself, or if the original is lost or inaccessible, by a state-
CORRECTION OF PATENTS 1416
ment to thateffect. The applicationmay be acceptedfor examination
in the absence of the original patent or the statement, but one
or the othermustbe supplied before the application is allowed.If
a reissueapplication is refused, theoriginal patent, if surrendered,
will be returned to.applicant uponrequest.
*****
An examination on the merits of the reissue application
is made even thongh the offer to surrender the
original patent, the actual surrender, or a statement to
the effect that the original is lost or inaccessible, has
not been received. Either the original patent, or a
statement as to loss or inaccessibility of the original
patent, must be received before the examiner can
allow the reissue application.
Form paragraph 14.05.01 may be used to notify
applicant that the original patent or an affidavit or
declaration as to loss is required before allowance.
'f[ /4.05.01 Original Patent Required Prior to Allowance
The original patent, or a statement as to loss or inaccessibility
of theoriginal patent, mustbe received beforethisreissue application
can be allowed. See 37 CPR 1.178.
Examiner Note:
1. This form paragraph may be used in an Office action to
remind applicant of therequirement for submission of the original
patent before allowance.
2, It may also be used in an Ex parte Quayle actionto require
such submission.
3. Do notuse this formparagraph in anexaminer's amendment.
The original patent or a statement of loss must be filed priorto
mailing of the "Noticeof AllowabiIity".
If the original patent has been surrendered in the
reissue application, and applicant requests the return
ofthe surrendered original patent upon abandonment
of the reissue application, the original patent will be
sent to the applicant by the Technology Center.
An applicant may request that a surrendered original
patent be transferred from an abandoned reissue
application to a continuation or divisional reissue
application. The technical support staff making the
transfer should note the transfer on the "Contents" of
the abandoned application. The application number
and filing date of the reissue application to which it is
transferred must be included in the notation. Even
where the original patent grant is submitted together
with the reissue application as filed, patentee must
include a copy of the printed original patent to serve
as the specification of the reissue application. See
37 CFR U72(a) and MPEP § 1411.
1400-33 August 2,001

1417 MANUAL OF PATENT EXAMINING PROCEDURE
1417 Claim for Benefit Under
35U.S.C.119(a)-(d)
PRIORITY UNDER 35 U.S.C. 119(a)-(d}WAS
PERFECTED IN THE ORIGINAL PATENT
A "claim" for the benefit of an earlier filing date in
a foreign country under 35 U.S.C. 119(a)-(d) must be
made in a reissue application, even though such a
claim was previously made in the application on
which the original patent was granted. HOWever, no
additional certified copy of the foreign application is
necessary. The procedure is similar to that for "Continuing
Applications" in MPEP § 201.14(b).
In addition, 37 CFR 1.63 requires that in any application
in which a claim for foreign priority is made
pursuant to 37 CPR 1.55, the oath or declaration must
identify the foreign application for patent or inventors'
certificate on which priority is claimed unless
supplied on an application data sheet (37 CFR 1)6),
and any foreign applications having a filing date
before that of the application on which priority is
claimed, by specifying:
(A) the application number of the foreign application;
(B) the foreign country or intellectual property
authority; and
(C) the day, month, and year of the filing of the
foreign application.
The examiner should note that the heading on
printed copies of the patent will not be carried forward
to the reissue from the original patent. Therefore,
it is important that the bibliographic data sheet
reprint (for series 091 and later applications) or the
front face of the reissue file wrapper (for series 081
and earlier applications) be endorsed by the examiner
under "FOREIGN APPLICATIONS."
PRIORITY UNDER 35 U.S.C. 119(a)-(d) IS
NEWLY PERFECTED IN THE REISSUE AP­
PLICATION
A reissue was granted in Brenner v. State ofIsrael,
400 F.2d 789, 158 USPQ 584 (D.C. Cir. 1968), where
the only ground urged was failure. to file a certified
copy of the original foreign application to obtain the
right of foreign priority under 35 U.S.C. 119(a)-(d)
before the patent was granted. In Brenner, the claim
August 2001 1400c36
for priority had been made in the prosecution of the
original patent, and it was only necessary to submit a
certified copy of the priority document in the reissue
application. to peI'fect priority. In a situation where it is
necessary tosubmit for the first time. both the claim
for priority and the certified copy of the priority document
in the reissue application, and the utility or plant
application which became the patent to be reissued
was filed on or after November 29, 2000, the reissue
applicantwill have to .file a petition for an unintentionally
delayed priority claim under 37 CFR 1.55(c)
in addition to filing a reissue application. See MPEP
§ 201.14(a).
1418 Notification of PriorIConcurrent
Proceedings and Decisions
Thereon, andofInformation
Known to be Material to
Patentability
37 CFR 1.178. Original patent; continuing duty of
applicant.
*****
(b) In any reissue application before the Office, the applicant
must call to the attentionof the Officeany prior or concurrentproceedings
in which the,patent (for whichreissue isrequested) is or
was involved, such as interferences, reissues, reexaminations, or
litigations and the results of such proceedings (see also
§ 1.173(a)(I)).
37 CFR 1.178(b) requires reissue applicants to call
to the attention of the Office any prior or concurrent
proceeding in which the patent (for which reissue is
requested) is or was involved and the results of such
proceedings. These proceedings would include interferences,
reissues, reexaminations, and litigations.
Litigation would encompass any papers filed in the
court or issued by the court, which may include, for
example, motions, pleadings, and court decisions,
This duty to submit information is continuing, and
runs from the time the reissue application is filed until
the reissue application is abandoned or issues as a
reissue patent.
In addition, a reissue application is subject to the
same duty of disclosure requirements as is any other
nonprovisional application. The provisionsof 37 CPR
1.63 require acknowledgment in the reissue oath or
declaration of the "dilly to disclose to the Office all
information known to the [applicants] to be material

to patentability as defined in § 1.56." Form paragraph
14.11.01 may be used to remind applicant of the duty
to disclose any litigation information which is material
to patentability.
'If 14.11.01 Reminder of Duties Imposed by 37 CFR
1.178(b) and37 CFR 1.56
Applicant is reminded of the'continuing obligation under 37
CPR 1.178(b), to timely apprise the Officeof any prior, or concurrent
proceeding in which Patent No. [1] is or was involved. These
proceeding;swould include interferences, rcissucs.. reexarninationa,
and litigation.
Applicant is further reminded of the continuing obligation
under 37 CPR 1.56, to ti,mely apprise theOfflce ofany information
which is material to patentability of the claims under consideration
in this reissue application.
These obligations rest with each individual associated with the
filing and'prosecution of-this application' for reissue. See also
MPEP §§ 1404, 1442.01 and 1442.04;
Examiner Note:
This form -paragraph is to be used in the first action in a reissue
application.
Reissue applicants may utilize 37 CFR 1.97 and
1.98 to comply with the duty of disclosure.required by
37 CPR 1.56. This does not, however, relieve applicant
of the duties under 37 CFR 1.175 of, for example,
stating "at least one error being relied upon."
While 37 CPR 1.97(b) provides for filing an information
disclosure statement within 3 months of the
filing of an application or before the mailing date of a
first Office action, reissue applicants are encouraged
to file information disclosure statements at thetime of
filing so that such statements will be available to the
public during the 2-month period provided by in
MPEP §1441.
1430 Reissue Files Open to the Public
and, Notice of Filing Reissue
Announced in, Official Gazette
37 CFR I.Il. Files open to the public.
*****
(b) All reissue applications, all applications in which the
Office has accepted a request to open the complete application-to
inspection by the public, and related papers-in the application file,
are open to inspection by the public, and copies may be fumished
upon paying the fee therefor. The filing of reissue applications,
other than continuedprosecution applications under-§ 1.53(d) of
reissue applications, will. be .announced in the Official Gazette.
The announcement shall include at least the filing date, reissue
application and original patent numbers,title,class and subclass,
CORRECTION OF PATENTS
1400-37
1430
name, of theinventor, name.of the owner ofrecord, nameof.the
attorney or agent of record, and examining group. to which' the
reissue applicationis assigned.
*****
Under 37 CFR 1.11(b) all reissue applications filed
after March 1, 1977, are open to inspection by the
general public, and copies maybe furnished upon
paying the fee therefor. The filing of reissue applications
(except for continned prosecution applications
(CPA's) filed under 37 CFR 1.53(d)) will be
announced in the Official Gazette. The announcement
gives interested members of the public an opportunity
to submit to the examiner information pertinent to the
patentability of the reissue application. The announcement
includes the filing date, reissue application and
original patent numbers, title, class and subclass,
name of the inventor, name of the owner of record,
name of the attorney or agent of record, andthe Technology
Center (TC) to which the reissue application is
initially assigued. A TC Director or other appropriate
Office official may, under appropriate circumstances,
postpone access to or the making of copies of a reissue
application, such as,for example, to avoid interruption
of the examination or oth.er review of the
application by an examiner. Those reissue applications
already on file prior to March 1, 1977 are not
automatically open to inspection, but a liberal policy
is followed by the Office.of Patent Legal Administration
and by the Board of Patent Appeals and Interferences
(see Mi'EP §1002.02(b), item 19) in granting
petitions for access to such applications.
A notice of a reissue application in the Official
Gazette should be published prior to any examination
of the.application. If an inadvertent failure to publish
notice of the filing of the reissue application in the
Official Gazette is recognized later in the examination,
action shonld be taken to have the notice published
as quickly as possible, and. action on the
application may be delayed until two months after the
publication, allowing for any protests to be filed.
The filing of a continued prosecution application
(CPA). under 37 CPR 1.53(d) of a reissue application
will not be annonnced in the Official Gazette.
Although the filing of a CPA of areissue application
constitutes the filing of a reissue application, the
announcement of the filing of such CPA would be
redundant in view of the announcement of the filing
of the prior reissue application in the Official Gazette
August 2001

1431 MANUAL OF PATENT EXAMiNING PROCEDURE
and the fact that the same application number and file
will continue to be used for the CPA.
If applicant files a Request for Continued Examination
(RCE) of the reissue application under 37 CPR
1.114 (which can be filed on or after May 29,2000 for
a reissue application filed on or after June 8, 1995),
such filing will not be announced in the Official
Gazette. An RCE continues prosecution of the existing
reissue application and is not a filing of a new
application.
For those reissue applications filed on or after
March I, 1977, the following procedure will be
observed:
(A) The filing of all reissue applications, except
for CPAs filed under 37 CFR 1.53(d), will be
announced in the Official Gazette and will include
certain identifying data as specified in 37 CFR
1.11(b). Any member of the general public may
request access to a particular reissue application filed
after March I, 1977. Since no record of such request
is intended to be kept, an oral request will suffice.
(B) The reissue application files will be maintained
in the TCs and inspection thereof will be supervised
by TC personnel. Although no general limit is
placed on the amount of time spent reviewing the
files, the Office may impose limitations, if necessary,
e.g., where the application is actively being processed.
(C) Where the reissue application has left the TC
for administrative processing, requests for access
should be directed to the appropriate supervisory personnel
where the application is currently located.
(D) Requests for copies of papers in the reissue
application file must be in writing and addressed to
the Commissioner of Patents and Trademarks, Box
10, Washington, D.C. 20231 and may be either mailed
or delivered to the Office Customer Service Window
(See MPEP § 502). The price for copies made by the
Office is set forth in 37 CPR 1.19.
1431 Notice in Patent File
37 CFR 1.179. Notice ofreissue application.
When an application for a reissue is filed, there will be placed
in the file of the original patenta notice stating that an application
for reissue has been filed. When the reissue is granted or the reissue
application is otherwise terminated, the fact will be added to
the notice in the file of the original patent.
Whenever a reissue application is filed, a Form
PTO-445 notice is placed in the patented file identify-
August 2001 1400-38
ing the reissue application by application number and
its filing date. The pertinent data is filled in by the
Office of Initial Patent Examination. When divisional
or continuation reissue applications are filed, a separate
form for each reissue application is placed in the
original patent file. When the reissue is issued, it is
important that the File Information Unit (Record
Room) be informed by the Examining Group technical
support staff of that fact by written memo. File
Information Unit (Record Room) personnel will
update the Form PTO-445 in the patented file.
1440 Examination of Reissue
Application
37 CFR 1.176. Examination ofreissue.
(a) A reissue application will be examined in the same manner
as a non-reissue,non-provisional application,and will be subject
to all the requirements of the rules related to non-reissue
applications. Applications for reissue will be acted on by the
examiner in advance of other applications.
(b) Restriction between subject matter of the original patent
claims and previously unclaimed subject matter may be required
(restriction involving only subject matter of the original patent
claims will not be required). If restriction is required, the subject
matter of the original patent claims will be held to be constructively
elected unless a disclaimer of all the patent claims is filed in
the reissue application, which disclaimer cannot be withdrawn by
applicant.
37 CPR Ll76 provides that an original claim, if represented
in a reissue application, will be fully examined
in the same manner, and subject to the same rules
as if being presented for the first time in an original
non-reissue, nonprovisional application, except that
division wiil not be required by the examiner. See
MPEP § 1450 and § 1451. Reissue applications are
normally examined by the same examiner who issued
the patent for which reissue is requested. In addition,
the application willbe examined with respect to compliance
with 37 CFR 1.171-Ll79 relating specifically
to reissue applications, for example, the reissue oath
or declaration will be carefully reviewed for compliance
with 37 CPR Ll75. See MPEP § 1444 for handling
applications in which the oath or declaration
lacks compliance with 37 CFR Ll75. Reissue applications
with related litigation will be acted on by the
examiner before any other special applications, and
will be acted on immediately by the examiner, subject
only to a 2-month delay after publication for examining
reissue applications; see MPEP § 1441.

The original patent file wrapper should always be
ordered and reviewed when examining a reissue
application thereof.
1441 Two-MonthDelay Period
37 CFR 1.176 provides that reissue applications
will be acted on by the examiner in advance of other
applications, i.e., "special." Generally, areissue application
will not be acted on sooner than 2 months after
announcement of the filing of the reissue has
appeared in the Official Gazette. The 2-month delay is
provided in order that members of the public may
have time to review the reissue application and submit
pertinent information to the Office before the examiner's
action. The pertinent information is submitted
in the form of a protest under 37 CFR 1.291(a). As set
forth in MPEP § 1901.04, the public should be aware
that such submissions should be made as early as pose
sible, since uuder certaiu circumstances the 2-month
delay period will not be employed. For example, the
Office will act on continuation and divisional reissue
applications prior to the expiration of the 2-month
period after announcement. Additionally,' the •.Office
will entertain petitions under 37 CFR 1.182 which are
accompanied by the required petition fee (37.CFR
1.17(h)) to act on a reissue applicationwithout.delaying
for 2 months. Accordingly, protestors to reissue
applications (see MPEP § 1441.01) cannot automatically
assume that a full 2-month delay period will
always be available. Appropriate reasons for requesting
that the 2-month delay period not be employed
include that litigation has been stayed to permit the
filing of the reissue application. Such petitions ate
decided by the Office of Patent Legal Administration.
1441.01 Protest in Reissue Applications
A protest with regard to a reissue application
should be filed within the 2-month period following
the announcement of the filing of the reissue application
in the Official Gazette. If the protest.ofa reissue
application cannot be.filed within the 2-month delay
period, the protest. can be submitted at a later time.
Where the protest is submitted after the 2-month
period, no petition for entry of the protest under 37
CFR 1.182 is needed with respect to the protest being
submitted after the 2 months unless a final rejection
has been issued or prosecution on the merits has been
closed for the reissue application.
CORRECTION OF PATENTS 1442.01
Where the protest is submitted after the 2-month
period; the protest may be received after the first
Office action by the examiner, sincereissue applica-'
tions are. takenup •"special." Once the first Office
action is mailed (after the 2-month period), a member
of the public may still submit pertineut information in
the form of a protest under 37 CFR 1.291(a), and the
examiner will consider the information submitted in
the next Office action, to the extent that such consideration
is appropriate. See MPEP § 1901.04 and
§ 1901.06 for the timeliness.and content criteria as to
when aprotest is considered.
The Technology Center (TC) to whichthe reissue
application is assigned is listed in the Official Gazette
notice of filing of the reissue application. Accord.
ingly, the indicated TC should retainthe reissue application
filefor 2 months afterthe date of the Official
Gazette notice before transferring the reissue application
under the procedure set forth in MPEP
§ 903.08(d).
The publication of a notice of a reissue application
in the Official Gazette should be done prior to any
examination of the reissue application. Ifan inadvertent
failure to publish notice of the filing of the reissue
application in the Official Gazette isrecognized later
in the examination, action should be taken to have the
notice published as quickly as possible, and action ou
the reissue application may be delayed.until 2 months
after .the publication, allowing for any protests .to be
filed.
See MPEP § 1901.06 for general procedures 0)1
examiner treatment of protests in.reissue applications.
1442 Special Status
All reissue applications are taken up "special;" and
remain "special" even though applicant does not
respond promptly.
All reissue applicatious, except those under suspensionbecause
oflitigation, will be taken up for action
ahead of other "special" applications; this means that
all issues not deferred will-betreated and respouded to
immediately. Furthermore, reissue applications
involved in litigation will be taken up for action in
advance of other reissue applications.
1442.01 Litigation-Related Reissues
During initial review, the examiner should determine
whether the patent for which the reissue has
1400-39 August2001

1442.05 MANUAL OF PATENT EXAMINlNG PROCEDURE
should be updated in the reissue application as soon as
significant events happen in the litigation.
When a reissue application is filed, the examiner
should determine whether the original patent has been
adjudicated by a court. The decision(s) of the court,
and also other papers in the suit, may provide information
essential to the examination of the reissue.
Examiners should inform the' applicant of the duty to
supply information as to litigation involving the
patent. Form paragraph 14.11.01 may be used for this
purpose. See MPEP § 1418.
Additionally, the patented file will contain notices
of the filing and termination of infringement suits on
the patent. Such notices are required by law to be filed
by the Clerks of the Federal District Courts. These
notices do not indicate if there was an opinion by the
court, nor whether a decision was published. Shepard's
Federal Citations and the cumulative digests of
the United States Patents Quarterly, both of which are
in the Lutrelle F. Parker, Sr., Memorial Law Library,
contain tables of patent numbers giving the citation of
published decisions concerning the patent.
A litigation computer search by the Scientific and
Technical Information Center (STlC) should be
requested by the examiner to determine whether the
patent has been, or is, involved in litigation. The
"Search Notes" box on the application file wrapper
can then be completed to indicate that the review was
conducted. A copy ofthe STIC search should be holepunched
and placed in the reissue file.
Additional information or guidance as to making a
litigation search may be obtained from the library of
the Office of the Solicitor. Where papers are not otherwise
conveniently obtainable, the applicant may be
requested to supply copies of papers and records in
suits, or the Office Of the Solicitor maybe requested
to obtain them from the court. The information thus
obtainedshould be carefully considered for its bearing
on the proposed Claims of the reissue, particularly
when the reissue application was filed in view of the
holding of a court.
If the examiner becomes aware of litigation involving
the patent sought to. be reissued during examination
of the reissue application, and applicant has not
made the details regarding that litigation of record in
the reissue application, the examiner, in the next
Office action, should inquire regarding the same.
August 2001
1400-42
Form paragraph 14.06 may be used for such an
inquiry. See MPEP § 1442.01.
If the additional details of the litigation appear to be
material to patentability of the reissue application, the
examiner may make such additional inquiries as necessary
and appropriate.
1442.05 Cases in Which Stays
Were Considered
Federal District Courts stay litigation in significant
numbers of cases to permit consideration of a reissue
application by the Office. Several exemplary cases are
listed here for the convenience of the Office, the
courts and the public,
In most instances, the reissue-examination procedure
is instituted by a patent owner who voluntarily
files a reissue application as a consequence of related
patent litigation. However, some District Courts have
required a patentee-litigant to file a reissue application,
for example:
Alpine Engineering Inc. v. Automated Building
Components Inc., BNAlPTCJ 367: A-12 (S.D. Fla.
1978);
Lee-Boy Mfg. Co. v. Puckett, 202 USPQ 573 (D.
Ga. 1978);
Choat v. Rome Industries Inc. 203 USPQ 549
(N.D. Ga. 1979).
Other courts have declined to so order, for example:
Bielomatik Leuze & Co., v. Southwest Tablet Mfg.
Co" 204 USPQ 226 (N.D. Texas 1979);
RCA Corp. v. Applied Digital Data Systems Inc.,
201 USPQ 451 (D. Del. 1979);
Antonious v. Kamata-Ri & Co. Ltd., 204 USPQ
294 (D. Md. 1979).
Only a patentee or his or her assignee may file a
reissue patent application. An order for a different
party to file a reissue will not be binding on the
Office.
1442.05(a) Stays Granted
"Stays" of court or administrative proceedings in
litigation were ordered in the following sampling of
reported decisions.

PIC Inc. v. Prescon Corp., 195 USPQ 525 (D. Del.
1977).
Fisher Controls Co. Inc. v. Control Components,
Inc., 196 USPQ 817 (S.D. Iowa 1977) (Note also
203 USPQ 1059 denying discovery dnring the
stay.).
Alpine Engineering Inc. v. Automated Building
Components Inc., BNAlPTCJ 367: A.!12 (S.D. Fla.
1978) (dismissed a Declaratory Jndgment suit with
order for patentee to seek reissue in the Office).
AMI Industries, Inc. v. E. A. Industries, Inc., 204
USPQ 568 (W.D. N.C.1978) (with dicta that if suit
had not been dismissed, proceedings would have
been stayed for Office consideration).
Reynolds Metal Co. v. Aluminum Co. ofAmerica,
198 USPQ 529 (N.D. Ind. 1978).
Sauder Industries, Inc. v. Carborundum Co., 201
USPQ 240 (N.D. Ohio 1978).
Rohm and Haas Co. v. Mobil Oil Corp., 201
USPQ 80 (D. Del. 1978) (with provision for limited
discovery on allegations of fraud for Office's
benefit).
Lee-Boy Mfg. Co. v. Puckett, 202 USPQ 573 (D.
Ga. 1978) (reissue ordered after discovery and
during wait for trial).
Fas-Line Sales & Rentals, Inc. v. E-2 Lay Pipe
Corp., 203 USPQ 497 (W.n. Okla. 1979).
Choat v. Rome Industries Inc., 203 USPQ 549
(N.D. Ga. 1979) (directed patentee to file reissue
application).
In re Certain High-Voltage Circuit Interrupters
and Components Thereof, 204 USPQ 50 (Int'!
Trade Comm'n 1979).
1442.05(b) Stays Denied
"Stays" of COllft or administrative proceedings in
litigation were denied in the following sampling of
reported decisions.
General Tire and Rubber Co. v. Watson-Bowman
Associates, Inc., 193 USPQ 479 (D. Del. 1977).
Perkin-Elmer Corp. v. Westinghouse Electric
Corp., BNAlPTCJ 376: A-ll (E.D. N.Y. 1978).
In reCertain Ceramic Tile Setters, No. 337-TA­
41, BNAlPTCJ 385: A-21 (Int'! Trade Comm' n
1978).
E.C.H. Will v. Freundlich-Gomez Machinery
Corp., 201 USPQ 476 (S.D. N.Y. 1978).
CORRECTION OF PATENTS 1443
RCA Corp. v. Applied Digital Data Systems Inc.,
201 USPQ 451 (D. Del. 1979) (denied stay where
a patentee had not filed a reissue),
Bielomatik.Leuze & Co., v. Southwest Tablet Mfg.
cs.. 204 USPQ 226 (N.D. Texas 1979) (refused to
order reissue),
Antonious v. Kamata-Ri & Co. Ltd., 204 USPQ
294 (D. Md. 1979) (refused to order reissue).
1443 Initial Examiner Review
As part of an examiner's preparation for the examination
of a reissue application, the Examiner Reissue
Guide and Checklist should be consulted for basic
guidance and suggestions for handling the prosecution.
The Technology Center (TC) Special Program
Examiners (SPREs) should make the Guide and
Checklist available at thetime a reissue application is
docketed to au examiner.
On initial receipt of a reissue application, the examiner
should inspect the submission under 37 CPR
1.172 as to documentaryevidence of a chain of title
from the original owner to the assignee to determine
whether the consent requirement of 37 CPR 1.172 has
been met. The examiner will compare the consent and
documentary evidence of'ownership; the assignee
indicated by the documentary evidence must be the
same assignee which signed the consent. Also, the
personwho signs the consent for the assignee and the
person who signs the submission of evidence.of ownership
for the assignee must both be persons having
authority to do so. See also MPEP § 324.
Where the application is assigned, and there is no
submission under 37 CFR 1.172 as to documentary
evidence in the application, the examiner should
require the submission using form paragraph 14.16,
Once the submission under 37 CFR 1.172 as to documentary
evidence is received, it must .be compared
with the consent to. determine whether the assignee
indicated by the documentary evidence is the same
assignee which signed the consent. See MPEP
§ 1410.01 for further discussion as to the required
consent and documentary evidence.
Where there is a statement of record that the application
is not assigned, there should be no submission
under 37 CFR 1.172 as to documentary evidence of
ownership in the application, and none should be
required by the examiner.
1400-43 August 2001

1444 MANUAL OF PATENT EXAMINING PROCEDURE
The filing of all reissue applications, except for
continued prosecution applications (CPAs)filed under
37 CFR 1.53(d), must be announced in the Official
Gazette. Accordingly, for any reissue application
other than a CPA, the examiner should determine if
the filing of the reissue application has been
announced in the Official Gazette as provided in 37
CPR 1.11(b), especially where the reissue is a file
wrapper continuation under former 37 CFR 1.62. The
date of the Official Gazette notice can usually be
found on the pink "REISSUE" tag which protrudes
from the top of the application file of 081 or earlier
series. Where the date is missing from the tag, or
where the tag itself is missing, the PALM screen
(2952) should be checked for the presence of an
"NRE" entry in the contents. For 091 and later series
reissue applications, the Official Gazette publication
date appears on the face of the file wrapper. If the filing
of the reissue application has not been announced
in the Official Gazette, the reissue application should
be returned to the Office of Initial Patent Examination
(Special Processing) to handle the announcement. The
examiner should not further act on the reissue until 2
months after announcement ofthe filing of the reissue
has appeared in the Official Gazette. See MPEP
§ 1440.
The examiner should determine if there is'concurrent
litigation, and if so, the status thereof (MPEP §
1442.01), and whether thereissue file has been appropriately
marked. Note MPEP § 1404.'
The examiner should determine if a protest has
been filed, and if so, it should be handled as set forth
in MPEP§ 1901.06.
The examiner should determine whether the patent
is involved in an interference, and if so, should refer
to MPEP § 1449.01 before taking any action on the
reissue application.
The examiner should check that an offer to surrender
the original patent, or a statement to the effect that
the original is lost or inaccessible, has been received.
An examination on the merits is made even though
the above has not been received. See MPEP § 1416.
The examiner should verify that all Certificate of
Correction changes have been properly incorporated
into thereissue application. See MPEP § 1411.01.
The examiner should verify that the patent on
which the reissue applicationis based has not expired,
either because its term has run or because required
August2001 1400-44
maintenance fees have not been paid. Once a patent
has expired, the Commissioner no longer has the
authority under 35 U.S.C. 251 to reissue the patent.
See In re Morgan, 990 F.2d 1230, 26 USPQ2d 1392
(Fed. Cir. 1992). See also MPEP § 1415.01.
1444 Review of Reissue Oath!
Declaration
In accordance with 37 CFR 1.175, the following is
required in the reissue oath/declaration:
(A) A statement that the applicant believes the
original patent to be wholly or partly inoperative or
invalid-
(I) by reason of a defective specification or
drawing, or
(2) by reason ,of the patentee claiming more or
less than patentee had the right to claim in the patent;
(B) A statement of at least one error which is
relied upon to support the reissue application, i.e.,
which provides a basis for tile reissue;
(C) A statement that all errors which are being
corrected in the reissue application up to the time of
filing of the oath/declaration arose without any deceptive
intention on the part of the applicant; and
(D) The information required by 37 CFR 1.63.
MPEP § 1414 contains a discussion of each of the
above elements (i.e., requirements of a reissue oath/
declaration). The examiner should carefully review
the reissue oath/declaration in conjunction with that
discussion, in order to ensure that each element is provided
in the oath/declaration. Ifthe examiner's review
of the oath/declaration reveals a lack of compliance
with any of the requirements of 37 CFR 1.175, a
rejection of all the claims under 35 U.S.C. 251 should
be made on the basis that the reissue oath/declaration
is insufficient.
In preparing an Office action, the examiner should
use form paragraphs 14.01 through 14.01.04 to state
theobjection(s) to the oath/declaration, i.e., the
defects in the oath/declaration. These form paragraphs
are reproduced in MPEP § 1414. The examiner should
then use form paragraph 14.14 to reject the claims
under 35 U.S.C. 251, based upon the improper oath/
declaration.
'ff 14.14 Rejection, DefectiveReissue Oath or Declaration
Claim [1] rejected as being' based upon a defective reissue [2]
under 35 U.S.C. 251 as set forth above. See 37 CPR 1.175.

treated on the merits. Once the examiner has issned
the Office action providing notification of the restriction
requirement and treating the patent claims on the
merits, it is too late to obtain an examination on
the added claims in the reissue application by filing a
disclaimer of all the original patent claims. If reissue
applicant wishes to have the newly added claims be
treated on the merits, a divisional reissue application
must be filed to obtain examination of the added
claims. Reissue applicants should carefully note that
once a disclaimer of the patent claims is filed, it cannot
be withdrawn. It does not matter whether the reissue
application is still pending, or whether the reissue
application has been abandoned or issued as a reissue
patent. For all these situations, 37 CFR 1.176(b) states
that the disclaimer cannot be withdrawn; the disclaimer
willbe given effect.
Claims elected pursuant to a restriction requirement
will receive a complete examination on the merits,
while the non-elected claims (to any added invention(s))
will be held in abeyance in a withdrawn status,
and will only be examined if filed in a divisional
reissue application. If the reissue application containing
only original unamended claims becomes allowable
first (and no "error" under 35 U.S.C. 251 exists),
further action in that reissue application will be suspendedto
await examination in the divisional reissue
application(s) containing the added claims. The
Office will not allow claims in a reissue application
which does not correctany error in the original patent.
Once a divisional reissue application containing the
added claims is examined and becomes allowable, the
examiner will rejoin the two sets of examined and
allowable claims into a single reissue application for
issuance. Unless applicant requests to the contrary
prior to the examiner's rejoinder of the claims, the
claims will be rejoined in the first reissue application
(containing the pending original patent claims), and
the divisional reissue application will be held abandoned.
See MPEP § 145lfor additional discussion for
presenting multiple reissue applications.
As stated in 37 CFR 1.176(b), the examiner is not
permitted to require restriction among original claims
of the patent (i.e., among claims that were in the
patent prior to filing the reissue application). Even
CORRECTION OF PATENTS 1450
where the original patent contains claims to different
inventions which the examiner considers independent
or distinct, and the reissue application claims the same
inventions, a restriction reqnirement would be
improper. If such a restriction requirement is made, it
must be withdrawn.
Restriction between multiple inventions recited in
the newly added claims will be permitted provided the
added claims are drawn to several separate and distinct
inventions. In such a situation, the original patent
claims would be examined in the first reissue application,
and applicant is permitted to file a divisional
reissue application for each ofthe several separate and
distinct inventions identified in the examiner's restriction
requirement.
A situation will sometimes arise where the examiner
makes an election of species requirement
between the species claimed in the original patent
claims and a species of claims added in the reissue
application. In such a situation, if (I) the non-elected
claims to the added species depend from (or otherwise
include all limitations of) a generic claim which
embraces all species claims, and (2) the generic claim
is found allowable, then the non-elected claims of the
added species must be rejoined with the elected
claims of the original patent. See MPEP § 809.02(c).
A reissue applicant's failure to timely file a divisional
application is not considered to be error causing
a patent granted on elected claims to be partially
inoperative by reason of claiming less than the applicant
had aright to claim. Thus, such error is not correctable
by reissue of the original patent under 35
U.S.C. 251. In re Watkinson, 900 F.2d 230, 14
USPQ2d 1407 (Fed. Cir. 1990); In re Orita, 550 F.2d
1277, 1280, 193 USPQ 145, 148 (CCPA 1977). See
also In re Mead, 581 F. 2d 251, 198 USPQ 412
(CCPA 1978). Likewise, if the original patent specification
or the prosecution history of the original patent
shows an intent not to claim the newly presented
invention, that invention cannot be added by reissue.
In these situations, the reissue claims should be
rejected under 35 U.S.C. 251 for lack of defect in the
original patent and lack oferror in obtaining the original
patent. See also MPEP § 1412.01.
1400-51 August 2001